Games Workshop, makers of various 40K miniature and RPG games, has been defending their trademark on the term “space marine,” forcing Amazon to remove an indie author’s book because it had the phrase in the title. The always quick-to-anger Internet people were inflamed. Is GW in the right, or does the mob have a valid grievance?
This particular issue stems from author M.C.A. Hogarth, whose book Spots the Space Marine was blocked from sale at Amazon due to a trademark infringement claim from Games Workshop. You will note that the cover bears no resemblance to the hyper-masculine power-armored space marines of Games Workshop’s universe. Although this is really old news, for some reason it bubbled back up into Internet consciousness this week, probably due to a new blog post about it from Hogarth.
Before we break down the legal aspects of this incident, lets first enjoy the delicious irony of the above quote, from a 1978 issue of Games Workshop’s magazine, White Dwarf (Livingstone conflates trademark and copyright incorrectly in his quote, but his point remains obvious). The editorial was dug up by Russell Morrissey of ENWorld, which you can read in its entirety below.
Livingstone hasn’t been a part of Games Workshop for a long time — he and Steve Jackson sold the company in 1991. And that editorial is pretty fuzzy-headed, to be honest. I guess he wants anyone to be able to license a trademarked thing as long as they’re willing to pay for it, which leaves us with a weird kind of trademark that the creator would have no real control over. It’s still a funny counterpoint to the current imbroglio.
Now then, let’s examine this trademark. First of all, the term itself, “space marine,” has a long history. TVTropes identifies several examples dating back to the 1930s. It is also a generic term — it merely identifies an occupation (albeit a fictional one). Marines who work in space. The U.S. Patent and Trademark Office identifies four classes of trademarks and grades them as weak or strong. A strong trademark uses a fanciful term or incongruous name that is highly unique. Examples would include a name like “Vexolator,” or calling your vacuum cleaner the “Ultra-Banana.” “Space marines” is not fanciful. If they’d gone with Spayse Marinez or something, that would be a much stronger mark.
The next class suggests qualities of the goods or services, (like “Quick N Easy Pie Crust”). We’re not dealing with “Maximum Brutality brand Space Marines” here.
The third class of trademarks are merely descriptive. If you sell smart phones and you try to trademark a logo that’s just a picture of a smart phone, that’s a weak trademark. Because the term “space marine” has existed for so long and refers a general concept (a soldier in space), the phrase “space marine” is merely descriptive. The PTO considers these trademarks to be weak. “Not every mark is legally protectable, that is, some marks may not be capable of serving as the basis for a legal claim by the owner seeking to stop others from using a similar mark on related goods or services.”
(The final class of marks are not trademarkable at all and fall into “What are you, an idiot?” territory. Let’s just say no one who sells beer can trademark the name “Beer.”)
It is quite clear that the trademark of the term “space marine” has very little legal standing. If they did try to sue someone over it (they have not, although Internet hysteria has people claiming they are), they would almost certainly lose.
One thing that Games Workshop’s defenders will offer is that companies have to “protect their trademarks,” or else the marks will be considered abandoned. In fact, that’s what Games Workshop is claiming themselves. There’s a lot of brushing of hands and, “Welp, yeah, some people get their businesses crushed along the way — we don’t want that to happen but mumble mumble profits mumble shareholders.”
However, there is zero chance that anyone who sees Spots the Space Marine would think it is in any way related to Games Workshop, endorsed by them or otherwise treads upon their shaky trademark. Having that book removed was not any kind of necessary protection of a trademark. In fact, I suspect it was done because a small, independent author doesn’t have the resources to mount a legal battle of any kind. There are plenty of other uses of the term space marine that Games Workshop could have tried to squelch, but they didn’t start a fight with any large companies or prominent authors.
[Note 2: I am not a lawyer. Just a half-decent researcher. Law is complicated. I might get things wrong. So do lawyers, and they get paid for this stuff!]