Topic: Seriously Games Workshop? What's in a Name?

[Shas'Oink]

Some further interesting links:

From the president of the Science Fiction and Fantasy Writers of America

From Prophethat - containing various comments with examples of letters people have already sent to GW, as well as the actual GW trademark terms which I'll list here again for clarity:

    "…video computer games; computer software for playing games

    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.

oh, and this (which I haven't had a chance to watch yet being at work):
***SPECIAL EDITION*** On-Air Episode #4: Maggie Hogarth & Games Workshop

Deplorable...

I am now changing my name to Space Marine oink

[Killing Time]

Incidentally, it would appear that legal@gwplc.com is the email address to use.

[Chuckles, The Space Marine Clown]

According to a discussion in the comment thread on, I think, the SFWA post regarding this, legal@gwplc.com generates an automated response and is in essence a circular inbox with no humans checking it. Could be wrong about that though

[Tarrin the Space Marine]

BBC News - Row blows up over ownership of 'space marine' term

[Irisado]

According to a discussion in the comment thread on, I think, the SFWA post regarding this, legal@gwplc.com generates an automated response and is in essence a circular inbox with no humans checking it. Could be wrong about that though

If memory serves me correctly, the automated response used to give out another address to e-mail if you wanted a human to answer you.  This may have changed since I last contacted GW legal though.

Regarding the substantive point being discussed, this is one of the most extreme measures I've seen GW take in recent times, and I'm disappointed by the company's decision.  They should have left well enough alone.

[Plastikente]

I am disgusted by this.  It's ridiculous to try to claim ownership of a term that has been used by many sci-fi authors before GW was even conceived, and it's a dirty tactic to just target the small guy who can't afford to fight back.  I'm going to go and write some emails to GW and Amazon whilst I'm still good and angry 

[The GrimSqueaker]

Someone blinked as the ebook is back on Amazon.

Also, from GW's facebook page:

"Games Workshop owns and protects many valuable trademarks in a number of territories and classes across the world. For example, 'Warhammer' and 'Space Marine' are registered trademarks in a number of classes and territories. In some other territories and classes they are unregistered trademarks protected by commercial use. Whenever we are informed of, or otherwise discover, a commercially available product whose title is or uses a Games Workshop trademark without our consent, we have no choice but to take reasonable action. We would be failing in our duty to our shareholders if we did not protect our property.

To be clear, Games Workshop has never claimed to own words or phrases such as 'warhammer' or 'space marine' as regards their general use in everyday life, for example within a body of prose. By illustration, although Games Workshop clearly owns many registered trademarks for the Warhammer brand, we do not claim to own the word 'warhammer' in common use as a hand weapon.

Trademarks as opposed to use of a word in prose or everyday language are two very different things. Games Workshop is always vigilant in protecting the former, but never makes any claim to owning the latter."

Guys, you don't need to post the same links over and over again. When you do, it makes it look like you've ignored the other posts in the thread that already has them listed and that's kind of rude. 

Edit: As an aside, for trademarks it doesn't matter if there's prior art (that's for patents). All that matters is that you market your products using the term/art/slogan and there aren't any closely competing claims to the same. That's how celebrities trademark their name/slogans. They're not saying no-one in the history of man has ever been named that before, they're saying they're marketing themselves/progeny using that name. GW were saying that since they do own the trademark for Space Marine in the UK/EU (including for "printed material") and now that they're pushing ebooks, that trademark is to apply to ebooks as well. Yeah, I know it's bullamphetamine parrot but that's a major part of the issue.

[Ork E Nuff]

Do the powers that be at GW just sit around the board room and wonder what to do all day?  This is exactly what happens when lawyers run rampent throughout the system.  Sue the little knowns so the heavy hitters all fall into line...I'm not going to stop buying GW products, but this really puts the damper on the whole community at large.  How long before they start attacking the blogospheres for using the "IP" incorrectly?  It's only a matter of time before they start pointing the crosshairs at us and every other blog/forum site that doesn't "pay" homeage correctly (literally).  I believe the idea of a marine, in space, in armor, predates GW by quite a few years; hence "Starship Troopers"  Idiots....

[Kindred]

Edit: As an aside, for trademarks it doesn't matter if there's prior art (that's for patents). All that matters is that you market your products using the term/art/slogan and there aren't any closely competing claims to the same. That's how celebrities trademark their name/slogans. They're not saying no-one in the history of man has ever been named that before, they're saying they're marketing themselves/progeny using that name. GW were saying that since they do own the trademark for Space Marine in the UK/EU (including for "printed material") and now that they're pushing ebooks, that trademark is to apply to ebooks as well. Yeah, I know it's bullamphetamine parrot but that's a major part of the issue.

Rummy... as a note to this:
GW Does indeed hold Trademarks to the term "Space Marine" in the miniatures board gaming industry.
This in no way extends to any other industry without additional filings.
Just because they have started printing books set in their universe, using the term space marine does not, in any way, automatically extend their trademark to cover the use in science fiction literature.

This was, very clearly, an attempt to end run around the system by establishing a precedent with a soft target. GW has yet to realize that the world is a very small place these days - and even a self-published, minor author can get world-wide attention with a post or two in the right place.

As for the prior use...   Those examples you give are mostly in unrelated industries, which is what allowed the individuals to take out a trademark in the first place. If GW tried to take a trademark on the term "space marine" in science fiction literature, the clerk would laugh them out of his office. However, if they then pointed to one (or more) cases where some other entity (like Amazon) accepted their claim... then they might have a hearing.

[Nemo vas Varya]

oh, the legal basis is --

We have an army of lawyers. You don't.
If this case passes, even by default, we have now set precedent that can be cited in other cases.

Yea I first learned of this suit from other sites on the internet, I can understand GW going after Chinese recasters who are selling FW recasts online for much less than FW does, but this I don't get.  From what I have read all that GW has done so far is hit amazon with a the formal "stop selling this or else letter" and that's it.  So they haven't actually sued the author (yet anyway), which means they are either building up evidence for a case, or don't actually plan on doing anything because they don't have one (a case that is).

As others have said, GW didn't come up with the term space marine, in my mind it is like them trying to copyright the term "magic" or "wizard" and then go after fantasy novels with wizards and magic in them.

I am not going to go into the right or wrong of the initial case. The quote from Rummy explains why the case even happened. But as a guy who follows news very closely, and also a guy who gets very annoyed at the way the internet responds to 'accused' bullies, I want to point out that the case was brought forward in November of last year. The internet threw a amphetamine parrot storm, and the book was back on Amazon, and GW seemed to no longer pursuing it. In short, Games Workshop met its legal requirement to defend its trademark, and all is well now. They have made no filings, or further attempts. At all. The internet has invented the story of them going further.

If you have an actual filing, please post it, let me know if I am wrong.

Side Note: A Precedent in Law requires a Judge to pass judgement. Two attorneys settling a case outside of court will never establish a precedent. If Atty's could create laws willy nilly, why do we need a government system?

This genuinely disgusting behaviour.  I can't believe they are doing this...  It is completely and utterly morally incorrect. Demonstrates a total lack of behaviour and how greedy Games Workshop have become.  I don't like bully's.  I'll go out of my way to stick up for those they are bullying.... I may walk into Games Workshop and discuss this with the manager this weekend... As well as possibly smash up all my models outside their shop.  Then again that would get me in trouble.... I don't know.... I will find some way to cause them trouble over this though.

So you would confront, and yell at a person, whose entire job is to keep a store open, with a free hobby and gaming area, whose job it is to make sure the store has activities, the majority of which are free, and has no decision making power in any way to affect what is going on? Then you would make an immature display infront of their store? Please tell me, who is the bully?

[Arquarian]

I too have to throw a rational point of view here. And to also point out that many people have ignored the American court system.


There is no way on earth that an American judge would rule in favour of a large foreign multinational over an The little guy.


I'm also a little taken aback at how shocked everyone is. We know GW, we know how they behave so this shouldn't be a surprise.


Like it or not GW, like any other company is seeking to protect its IP. It's just taking things to extremes. And yes, it is obsurd. And there is no excuse to bullying.


A good thing about this is the backlash. Hopefully GW will realise they can't behave in such a manor.


They are like the Galactic Empire. The more they close their grip, the more star systems will slip through their fingers.




<acknowledgement to lukasfilm/Disney >

[Kindred]

CommissarNemoVarya,

1- the update from the author specifically mentions that GW demanded that Amazon remove his book in mid-December (not November) and his update was as of February.
(and there is a new update which indicates that Amazon has reinstated the book)

2- GW has NO intellectual property involved in this BS. Just because they trademarked the term Space Marine in the miniatures boardgaming industry, and they have now published books, gives them absolutely ZERO right or property in the science fiction publishing industry. That was the truly bizarre (and bullying) nature of their claim.

3- Although it might not have set fully legal precedent, having a settled case on record DOES set precedent and may influence the decision in future cases.

[Nemo vas Varya]

CommissarNemoVarya,

1- the update from the author specifically mentions that GW demanded that Amazon remove his book in mid-December (not November) and his update was as of February.
(and there is a new update which indicates that Amazon has reinstated the book)

2- GW has NO intellectual property involved in this BS. Just because they trademarked the term Space Marine in the miniatures boardgaming industry, and they have now published books, gives them absolutely ZERO right or property in the science fiction publishing industry. That was the truly bizarre (and bullying) nature of their claim.

3- Although it might not have set fully legal precedent, having a settled case on record DOES set precedent and may influence the decision in future cases.

I was off by a month, and you also pointed out that it was brought back up, not by action from GW, but by the author stirring up a storm again.

As to them having no right. That doesn't matter, they HAVE to show intention to defend the TM. They did. Spots the Space Marine is still around and is not going anywhere. This was literally just a formality that had to be gone threw, it was just blown out of proportion, most likely because the author ignored attempts to contact, was aggressive in response and more or less did not listen. HOWEVER we do not know this, because the communications between the author and GW have not been disclosed and should not be. The author decided to take it to the internet, and let the rage out, to which the internet responded in kind.

I honestly believe she posted her update because nothing came of the fiasco a few months back and she liked the attention/sold more books, and was trying to bottle lightening a second time. The internet has seemed to provide this in spades.

[Kindred]

we will have to agree to disagree then, because I see the completely opposite side of the story from you.

[Matthew Hermosillo]

Interesting discussion thread.

Now I'll be the first to admit that I haven't done a lot of research into this topic but I think its important to understand that there are possible (let me stress that again POSSIBLE) reasons for GW undertaking the action that it is. I want to explore a few of them for the sake of adding to the discussion.


1) if you don't protect it you loose it.

Intellectual property law in the United States requires the owner of the intellectual porperty to actively protect its interests. If an intellectual property owner knows about an activity that violates its intellectual porperty but does not sue until a latter date, this could become a legal defense under the right circumstances. If an owner does not sue or protect its intellectual porperty it could effectively loose the ability to control the sale of its property.

Since its not always easy to know when someone is violating your intellectual property there are many legal advantages to sue any and all parties just to insure that a "protected zone"  is created. GW may have been considering this when it sued what I understand is a published book whose name cannot be easily redacted.

2) Trademark, if it becomes ubiqitous you loose it

The basic idea behind american trademark law is that your trademark is somehow special in its field and helps seperate your product from other similar products. For example I make tissue paper called "wipe your nose" with a distincitive color, symbol, looks, etc, this would help distinguish these tissues from "Kleenex" tissues. Related to this issue, if your brand becomes too successful and your trademark becomes the calling card for all similar products in your field, you could loose your trademark. For example in the United States, "Kleenex" is almost synonymous with tissue (at least where I am from) as a result Kleenex maybe in danger of loosing its trademark.

GW maybe suing this other author on the basis that it wants to try and keep the phrase "Space Marine" as limited as possible.
 

These are just some possible explainations to explain GW's activity beyond simple greed. Hope they add to the discussion


 

[Arquarian]

Hate the game not the player.  Unfortunately this is the world we live in. 


GW are protecting their property, in any and all ways they can.  This leads to some bullying tactics, which are inexcusable, but that is how the game is played.  As Matthew rightly states, if they don't actively pursue any and all potential breeches, rightly or wrongly they will be seen by any court to be lacking here and that would go against them in the future if any substantial claim were t materialise.

[Chuckles, The Space Marine Clown]

There was no breech. An author used a common-usage term in a piece of literature, and a company with a similar, gaming-related trademark claimed their trademark extended to literature. It simply doesn't work that way, and GW are under no obligation to protect trademarks that they do not in fact possess.

[Arquarian]

Chuckles, you are exactly right.


But it stands that GW did what they did.  They did it in the misguided thought that they stood to gain from such an action, by way not not losing something sometime in the future.


I do personally think this has blown up out of all proportion. The Net effect of this entire affair is that GW are seen as the big bad aggressor, a fact we all knew in the first place and secondly that an obscure Sci-Fi author is now well known in the community.


No one is going to sue anyone, no one is going to give up the hobby, Amazon has started re-sell in spot the magic pancake and hopefully Hoggarth will make a little more money out of it all.

[Chuckles, The Space Marine Clown]

Well if it hadn't caused such a massive amphetamine parrotstorm on the interwebz, can we be sure that Amazon would have reinstated the ebook? It's impossible to prove but I suspect the answer is no.

I do personally think this has blown up out of all proportion. The Net effect of this entire affair is that GW are seen as the big bad aggressor, a fact we all knew in the first place and secondly that an obscure Sci-Fi author is now well known in the community. 

Well maybe, but just because we know the sort of amphetamine parrot GW Legal gets up to on a regular basis doesn't mean we have to allow them free reign when they try again, especially not when there's a reasonable chance something might happen if we object. I don't see much benefit in dismissing the outcry against GW Legal's actions here.

[Underhand]

Publish a story with the term 'space marine' and have GW legal interfere with your lawful commercial enterprise.  Don't hate the player, hate the game.

Wear a short dress and get raped.  Don't hate the player, hate the game.