You might remember last February, when we ran a story about how Games Workshop had approached Amazon and asked the online retailer stop selling a book entitled Spots the Space Marine: Defense of the Fiddler, penned by writer M.C.A. Hogarth. GW’s objection came because they claimed to own the trademark on the phrase “space marine,” specifically related to their Warhammer 40K games. While Games Workshop wasn’t actually pursuing legal action against Amazon or Hogarth at the time, Amazon nonetheless pulled down the e-book edition. Now, some three months later, Amazon has reversed that decision and returned the book to their online catalog.
Games Workshop had trademarked “space marine” for use in gaming, and while it seems ridiculous that anybody could trademark such a generic term that’s been in use for decades, protecting their trademark against other games — their theoretical competition — at least makes some sense. But Hogarth’s book wasn’t a game. At the time, Hogarth described her discussions with GW, explaining that the Warhammer 40K producer had recently entered the e-book market and claimed that development gave them “the common law trademark for the term ‘space marine’ in all formats.” Whether that claim could hold up in court remains to be seen.
Hogarth called the Interwebs for reinforcements, specifically the Electronic Frontier Foundation, who cited a short story from writer Bob Olsen, entitled “Captain Brink of the Space Marines.” That work ran in Amazing Stories in 1932, so if we are really calling dibs on the term “space marine,” Olsen beat Games Workshop to the punch by several decades. Here’s how the EFF described the situation on their site:
We were able to intervene and, to Amazon’s credit, the company reviewed the claim and restored the book. Let’s hope Games Workshop will now have the good sense to realize the bullying has to stop.
We’re pleased that Amazon did the right thing here, and that we were able to help. And we’re also pleased that so many internet users got involved to support Ms. Hogarth. Together, we sent a signal: Trademark bullies will not be tolerated online.
But the work is not yet done: this is just one instance of a much bigger ‘weakest link’ problem that imperils online speech and commerce. Offline, most legal users can ignore improper trademark threats, because the bullies will probably have the good sense not to test the matter in court and have little recourse through third parties. In the Internet context, however, individuals and organizations rely on service providers to help them communicate with the world and sell their products and services (YouTube, Facebook, eBay, Amazon.com, etc.). A trademark complaint directed to one of those third-party providers can mean a fast and easy takedown – as it did here.
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.
What do you think? Was Games Workshop justified in their actions, or were they just being bullies? I can see intervening in somebody was trying to profit from something that hewed close enough to your project to cause confusion, but I don’t think a book that happens to have “space marine” in the title and within its fiction is a problem worth pouncing on. Honestly, does anybody really think this book represented a threat to Games Workshop or its products?