Playpen

Welcome to the Playpen, our space for ferrety banter and whimsical snippets of things that aren't quite long enough for articles (although they might be) but that caught your eye anyway.

at 23:47 on 07-02-2013, Arthur B
Actually what *do* ebooks come under? Because if I'm reading this right Harry Potter doesn't have an ebooks trademark either. Although it does have a trademark for travel arrangements and insurance.

Here is an example of a trademark for ebooks (see "electronic publications" under the specification of goods).
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at 23:38 on 07-02-2013, Dan H
Actually what *do* ebooks come under? Because if I'm reading this right Harry Potter doesn't have an ebooks trademark either. Although it does have a trademark for travel arrangements and insurance.
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at 23:31 on 07-02-2013, Dan H
Oh, certainly they have generated goodwill there. But based on my searches, it doesn't appear that any of their registered trademarks protect ebooks (which do have a specific class - note that it's the specification of goods covered that matter for trademark protection, not the classes you choose as such, but even so none of the goods described in their Space Marine trademark in Europe - the TM with the broadest range of products claimed - offers anything which could be mistaken for an ebook).


It also, bizarrely, seems to cover "transportable buildings of metal, materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores."

So no /Space Marine/ brand hematite.
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at 22:19 on 07-02-2013, Arthur B
@Dan:
Obviously Arthur knows way more about trademark law than I do, but even if GW didn't invent the term "Space Marine" they built a large and valuable brand, including a large range of ebooks which are explicitly marketed using the "Space Marine" name ("Space Marines" and "Space Marine Battles" respectively).

Oh, certainly they have generated goodwill there. But based on my searches, it doesn't appear that any of their registered trademarks protect ebooks (which do have a specific class - note that it's the specification of goods covered that matter for trademark protection, not the classes you choose as such, but even so none of the goods described in their Space Marine trademark in Europe - the TM with the broadest range of products claimed - offers anything which could be mistaken for an ebook). That'd mean that to protect their goodwill they either have to a) aggressively scare people away or b) actually sue people under "passing off", which requires them to demonstrate deliberate misrepresentation. b) is what GW would be referring to by the use of the term "common law" - the right of passing off is common law because it developed through case law, registered trademarks are statute law because trademark registration was created through statutes. (Obviously registered trademarks have a body of case law associated with them, but the actual definition of what a trademark protects is defined primarily by the statute, which case law can interpret but not grossly modify.)

That said: I believe the author has print versions of the book available too. I also suspect that if GW got lucky in court a judge might rule that, since the definition of "book" has shifted over the years with the development of ebooks, their trademark can also be held to cover ebooks. On the other hand that would be very generous, and a judge could equally say "You knew you were getting into a new market with ebooks, you had an opportunity to register a new trademark specifically to cover ebooks, you didn't bother so you don't get to exert registered trademark rights there."

I think people often forget that "trademark" doesn't mean "I own these words, nobody else is allowed to say these words ever". It means "I sell a product with this name, other people are not allowed to sell similar products with the same or similar names".

Pretty much. The important thing, though, is that you can't just claim all products everywhere - well, you can register a trademark in every single class, but unless you actually use it in every single class you'll find your rights nibbled away through non-use provisions.

I'd also point out that GW are actually normally *pretty relaxed* about this sort of thing. They're very supportive of fansites and the community. It seems like they genuinely thought this guy's book could be mistaken for their IP, and to be honest I kind of see their point - when I heard the title the first thing I thought was "oh, is it a Games Workshop parody?"

If they are building a common law case they may well already be collecting customer testimonials from people who bought this thing thinking it was a GW-approved parody. (Indeed, they might have found out about this because of a customer contacting them saying "oi, look what this person's doing, I'd have saved my money if I knew it wasn't a 40K thing").

@Shimmin:
As far as I can tell (disclaimers etc.) the main complaint - other than general grievance at big companies pestering minor authors, which doesn't necessarily make them wrong - is that they don't have any trademark in publishing, only in games.

Actually, they do have a publishing trademark in Europe, so if the author made the book available to buy in Europe then they were infringing in Europe (if the book comes under the trademark, that is; the ebook, probably not, if they were selling hard copies to Europe they probably were).

Without getting into legal stuff I don't understand, there's also a sort of common sense issue that I think is bothering people, which is a) the astronomically remote chances of any confusion arising

Weeeeell, actually confusion can arise fairly easily and the level of confusion needed to infringe can be pretty damn low, depending on the court considers to be the "average consumer" for the particular market you are looking at. That can vary a lot; the average consumer is a bit more intelligent than "a moron in a hurry" (note: actual technical term), but they may not be that much brighter. (Actually, I might be able to make a credible argument in court that the average consumer of 40K tie in-fiction is a moron in a hurry...)

I agree that GW would be very lucky to win a passing off case. On the other hand, I don't know what the situation with sales of the book to Europe is.
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at 21:02 on 07-02-2013, Shimmin
In shorter news, I am enjoying the Hawkeye Initiative.
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at 20:48 on 07-02-2013, Shimmin
As far as I can tell (disclaimers etc.) the main complaint - other than general grievance at big companies pestering minor authors, which doesn't necessarily make them wrong - is that they don't have any trademark in publishing, only in games. Certainly if someone was trying to make tabletop games, or even computer games, called Space Marine Combat or something, I think the legal issue would be pretty clear. Unfortunate, possibly, because "space marine" is a pretty generic sort of term and incredibly useful for sci-fi - as the sheer amount of stuff using the term demonstrates - but nevertheless.

If GW are pursuing the author, while not actually having a trademark that covers use in print, and relying on muscle to get their way, then that's not okay. The fact that they now publish books about Space MarinesTM doesn't, as far as I know, automatically extend their trademark, nor does the fact that they published one book called Space Marine. As far as I'm aware, I'm perfectly entitled to publish a book called Windows, or Apple, or Rolls Royce Silver Ghost. WotC published a ton of Forgotten Realms books, and Rowling's schtick IS books, so the first is at best more complicated, and the second is frankly irrelevant here.

Without getting into legal stuff I don't understand, there's also a sort of common sense issue that I think is bothering people, which is a) the astronomically remote chances of any confusion arising, and b) the sheer ubiquity of the term in question. If the book was called Ragnar Blackmane on Mars, or Spot the Catachan Devil*, then those would be clearly ripped from GW and getting called on it should surprise nobody. Similarly, if it was called Space Marine: Emperor's Ascenscion and featured eight-foot mutants humans blessed with Imperial bioengineering techniques wearing ceramic powered armour and using boltguns, no real question.

But this is a perfectly common, intuitive term that you could in fact arrive at independently, and which many people probably did in its extensive history of prior use in sci-fi writing; and so to many people the thought that GW can swan up and claim ownership of it is complete bull and, if legal, should immediately be rendered il-. I am inclined to agree.

Secondly, there is no realistic possibility of confusion between Spots the Space Marine: Defense of the Fiddler and any Black Library product.** They have a different style of title. The blurb is clearly not that of an Adeptus Astartes novel. It has the wrong kind of artwork, and is about a woman. There is no "in the grim darkness..." and no GW branding. In fact, there is no similarity whatsoever except the words "space marine" and the fact that it's a book. Insofar as trademarks are intended to prevent passing off or mistaken purchases, they are clearly irrelevant in this case. People feel that therefore GW have no reasonable grounds for complaint, and again I am inclined to agree.

it was common for a trademark referring to one product to carry over to other similar products

I think people often forget that "trademark" doesn't mean "I own these words, nobody else is allowed to say these words ever". It means "I sell a product with this name, other people are not allowed to sell similar products with the same or similar names".

But a novel is in very few ways, if any, similar to a game where you roll dice to find out which lot of plastic models wins.

As far as I understand it, if you put the word "Starfleet" in the title of your book, you'd have problems with whoever owns the Trek license these days, but that clearly doesn't mean you're not allowed to refer to "Star Fleets" in the body of your work.

I don't know. However, I would argue (from an entirely alegal standpoint) that as long as nobody is likely to be confused about what they're buying, they should be allowed to use the term. I'm going to call on my minimal knowledge of non-obviousness in patents to bolster this case :) In this case, I'd say that sticking together "space" and "marine", or indeed "star" and "fleet", is so simple that it doesn't deserve protection except where genuine confusion is likely.

I'd also say that given all the prior use specifically in fiction, and on my (I think reasonable) assumption that "Space Marine" is not instantly recognisable as the GW variety, and that writing is a massively bigger field than tabletop wargaming, they would need a very strong argument to convince me that their claim to the term deserves special protection except (ditto).

I'd also point out that GW are actually normally *pretty relaxed* about this sort of thing.

One of the complaints that's turned up several times is claims of previous form in claiming trademark violation on very shaky grounds, against individuals, while leaving anyone with money for lawyers well alone. I have no idea how true that is. Fansites are kind of different from people making money who don't buy your stuff.

It seems like they genuinely thought this guy's book could be mistaken for their IP, and to be honest I kind of see their point - when I heard the title the first thing I thought was "oh, is it a Games Workshop parody?"

Um... woman. And if their legal department are so slapdash as to target books using those terms without actually reading anything about them whatsoever, they should get new lawyers. Presumably they already send themselves a lot of cease and desist letters by accident.

It might also be worth reminding everybody that this entire debacle is about a book called Spots the Space Marine.

So..? I mean, are you suggesting that it's more preposterous than Flesh of Cretacia or Space Wolves: Blood of Asaheim or Labyrinth of Sorrows? Without wanting to be all serious and portentous, I assume you aren't genuinely arguing that if a book has a mildly comedic title its legal position is irrelevant.

I would also point out that in this country we have an extensive and successful line of military fiction entitled Biggles.

*this sounds like a Where's Wally? book to me. Want.

**The fact that The Black Library is also the name of an erotic fiction publisher seems more ironic than usual here.
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at 19:18 on 07-02-2013, Dan H
Perhaps I'm just being a capitalist running dog, but having read the original article, I'm not convinced that GW are being completely insane here. Obviously Arthur knows way more about trademark law than I do, but even if GW didn't invent the term "Space Marine" they built a large and valuable brand, including a large range of ebooks which are explicitly marketed using the "Space Marine" name ("Space Marines" and "Space Marine Battles" respectively).

They aren't saying nobody is allowed to write books with people called "Space Marines" in them, and they're not - as the original post seems to suggest - threatening the legacy of Heinlein and the like. What they're suggesting is that publishing books with the word "Space Marine" in the title is infringing on their trademarks.

Again I know very little about how this works but I'd see it as roughly analogous to a term like "Starfleet". I don't know for certain but I think it's *extraordinarily* likely that people were referring to fleets of ships flying through space as "Star Fleets" long before "Starfleet" became the official name of the Federation's military/exploratory arm. As far as I understand it, if you put the word "Starfleet" in the title of your book, you'd have problems with whoever owns the Trek license these days, but that clearly doesn't mean you're not allowed to refer to "Star Fleets" in the body of your work. Similarly I'm pretty sure any GUI based operating system can refer to the little boxes in which things appear on your screen as "windows", you're just not allowed to use the name "Windows" for your operating system.

As for the reference to "common law" - Space Marine actually *is* (or seems to be) a registered trademark of Games Workshop (it's on their list here), I suspect that by "common law" (if that's what their lawyer really said) they meant that it was common for a trademark referring to one product to carry over to other similar products (or something, I have no idea if this is true). So I couldn't produce a miniatures wargame called "Space Marine" because GW already produces miniatures wargames. Nor could I produce a video game with that name, because again, GW license video games with that title. I think GW sees the same principle applying to the ebooks market, and while I think it's debatable, I don't think it's as screamingly insane as it first sounds.

I think people often forget that "trademark" doesn't mean "I own these words, nobody else is allowed to say these words ever". It means "I sell a product with this name, other people are not allowed to sell similar products with the same or similar names".

I suspect that books are a minefield here but I can see GW's argument. I mean I wouldn't expect WotC/Hasbro to let me put out a fantasy novel called "Tales of the Forgotten Realms" or JK Rowling to let me publish a book called "Harry Potter and the Wizards of Wiffenpoof" (even though TSR didn't invent the idea of a set of realms being perhaps not terribly well remembered, and JKR *certainly* didn't invent the name "Harry Potter").

I'd also point out that GW are actually normally *pretty relaxed* about this sort of thing. They're very supportive of fansites and the community. It seems like they genuinely thought this guy's book could be mistaken for their IP, and to be honest I kind of see their point - when I heard the title the first thing I thought was "oh, is it a Games Workshop parody?"

It might also be worth reminding everybody that this entire debacle is about a book called Spots the Space Marine.
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at 15:57 on 07-02-2013, James D
Huh, interesting. Is there anywhere on the packaging mentioning the GW licence?

Well, I can't find a picture of the fine print online, but I had a few of those figures and it did mention the Space Marine name being licensed from Games Workshop.
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at 15:23 on 07-02-2013, Arthur B
(Of course, with respect to the toy line GW's trademark almost certainly covers that and they're on more solid ground then, old school SF authors like Smith and Heinlein tending to be slack about the merchandising opportunities for their work...)
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at 15:22 on 07-02-2013, Arthur B
Huh, interesting. Is there anywhere on the packaging mentioning the GW licence?
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at 15:21 on 07-02-2013, James D
[citation needed] - in Aliens the soldiers are referred to as Colonial Marines so if they did shell out for a licence for "Space Marines" they were wasting their money since they never actually used the term.

No, they did use the term for the toyline at least, probably the comics too. You want a citation? How about this: package from an original Aliens Space Marine. Sorry about the small size, but if you look in the upper right you can clearly see it says "Space Marine Bishop".

firstly, I am 99.99% sure you are thinking of trademark law, secondly it would be more correct to say that your trademark rights get weaker (from the baseline established by case law and statute) the less you defend it against genericisation.

It's likely I'm thinking of trademark, yeah.
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at 14:22 on 07-02-2013, Fishing in the Mud
"WE ARE GOING ON A DATE YOU HEAR ME" gets my vote for the most appropriate response so far.
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at 13:31 on 07-02-2013, Arthur B
OKC_Ebooks: in which a troll makes an OKCupid profile and then responds to messages with one-liners from horse_ebooks, and somehow people convince themselves they are talking to a REAL LIVE WOMAN. Early contender for funniest prank of the year, I think.
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at 10:58 on 07-02-2013, Arthur B
Maybe they didn't invent it, but they've held some kind of copyright on the term for quite a while, and have defended it in the past.

More likely a trademark than a copyright, I'd say, since copyright in one- or two-word phrases is hard to argue.

I remember back when the Aliens franchise was calling their guys "Space Marines" in the 80s, they had to license the term from Games Workshop.

[citation needed] - in Aliens the soldiers are referred to as Colonial Marines so if they did shell out for a licence for "Space Marines" they were wasting their money since they never actually used the term.

As I understand it, in US copyright law at least your legal hold on a copyright gets stronger the more vigorously you defend it, while if you're lax in your defense and it gets out, you can lose it.

[citation needed] - firstly, I am 99.99% sure you are thinking of trademark law, secondly it would be more correct to say that your trademark rights get weaker (from the baseline established by case law and statute) the less you defend it against genericisation.

In the case of "Space Marine" Games Workshop are, in the long run, fucked. The estates of Bob Olsen, Robert Heinlein and E.E. Smith can point to continuous use in the term in works by both of those guys which GW have never objected to. More recently, John Ringo has been writing stories about "Allied Space Marines", and Niven and Pournelle's The Mote In God's Eye refers to Imperial Marines, which is almost as bad. I'm sure you can find numerous other examples. The term is clearly generic and was so long before GW came along.

Of course, that doesn't stop an over-eager legal department from leaning on people. I don't know whether US law has the same "groundless threats" provisions we have.
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at 06:07 on 07-02-2013, James D
Apparently Games Workshop are kicking off about use of the term "Space Marine", claiming ownership of it in all formats, despite knowing perfectly well that they didn't invent it. How charming.

Maybe they didn't invent it, but they've held some kind of copyright on the term for quite a while, and have defended it in the past. I remember back when the Aliens franchise was calling their guys "Space Marines" in the 80s, they had to license the term from Games Workshop. As I understand it, in US copyright law at least your legal hold on a copyright gets stronger the more vigorously you defend it, while if you're lax in your defense and it gets out, you can lose it.
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at 19:36 on 06-02-2013, Shimmin
Also: Hi again Adrienne, nice to hear from you! Sorry to hear you've not been well.
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at 18:29 on 06-02-2013, Arthur B
It would be interested to see the actual letters GW have sent this person because on the face of it, the case sounds mad, then again all cases sound mad until you've heard the other side's opinion. By "common law trademark" I imagine the guy means that they're trying to get him under the law of "passing off", which does not require a registered trademark but does require jumping through a bunch of evidential hoops which, on the face of it, GW would struggle to prove. (In particular, they'd need to demonstrate that Hogarth had deliberately misrepresented his stuff so that people think it was GW material, which doesn't seem to be the case here.)
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at 18:19 on 06-02-2013, Shimmin
Apparently Games Workshop are kicking off about use of the term "Space Marine", claiming ownership of it in all formats, despite knowing perfectly well that they didn't invent it. How charming.
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at 14:37 on 06-02-2013, Cammalot
Glad you're much better!
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at 10:00 on 06-02-2013, Robinson L
Glad you could rejoin us.
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at 01:33 on 06-02-2013, Adrienne
Thank you! Technically only *most* of me is back, as I had surgery to remove a couple of misbehaving internal organs last month. But I'm much better now!
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at 01:24 on 06-02-2013, Arthur B
Welcome back!
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at 01:10 on 06-02-2013, Adrienne
Hello, all. Just saying hi, I have been having Life (and medical craziness) happening for the last several months and i have missed my Ferretbrain fix. I'm catching up on all the articles since ... whoa, October? Eep.
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at 00:13 on 06-02-2013, Daniel F
What am I even reading? I don't even know where to begin.
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