Another month, another internet publishing scandal. Traditional cries of shock, horror and high-bandwidth digital outrage echoed through cyberspace when the little-known SF ebook Spots the Space Marine was pulled from sale on Amazon as a result of Games Workshop's complaint that it infringed their trademark. The author M.C.A. Hogarth was devastated, and said so on her website.
Fascinating though it is to imagine a Games Workshop trademark on Spots ("You can't call our customers spotty adolescents! That would be a serious infringement."), the offending term was Space Marine. Space marines feature in GW's miniatures-based wargame Warhammer 40,000, which is trademarked up to the hilt. Therefore, the logic goes, GW owns the term. All Your Space Marine Are Belong To Us.
Naturally there was a chorus of dissent from SF fandom's barrack-room lawyers, some remembering the egregious efforts of the late unlamented Fandom Inc to claim ownership of the word "fandom" without even having trademarked it (though they pretended they had). Hey, Robert Heinlein used Space Marines in Space Cadet back in 1948! E.E. "Doc" Smith had them in First Lensman, published 1950! Only fanatics remember Bob Olsen's "Captain Brink of the Space Marines" and "The Space Marines and the Slavers", from Amazing Stories magazine in November 1932 and December 1936 respectively; but it looks as though Olsen coined the phrase.
Unfortunately this "prior art" argument applies to patent law, not trademark law. (I loved the recent SF twist on the theme when Samsung challenged Apple's patents on tablet computers by citing fictional prior art, such as a tablet-like device that appeared in 2001: A Space Odyssey. This ploy was not successful.) No matter how loudly you repeat that the word "hobbit" dates back to a nineteenth-century list of mythical creatures in The Denham Tracts – "boggleboes, bogies, redmen, portunes, grants, hobbits, hobgoblins, brown-men ..." – you'll still incur the litigious wrath of Warner Bros and New Line if you produce a film with the dictionary word Hobbit in the title.
Someone did: Asylum's Age of the Hobbits, a "mockbuster" epic that cheekily pretends to be about the extinct human subspecies nicknamed hobbits by the archaeologists, was scheduled to launch suspiciously close to the first official Hobbit movie. Warner and New Line contrived to get its public release blocked by a US court order. Hopeful legal arguments about prior art in The Denham Tracts (which Tolkien himself may never have seen) were in vain.
I am not a lawyer – and avoid that tiresome abbreviation IANAL since it sounds too much like the geeky little brother of Asimov's I, Robot – but I know where to find one. The Scrivener's Error blog, written by a real US lawyer who calls it a blawg and specializes in SF intellectual property issues, examined the case of Spots the Space Marine and opined that "nobody should let lawyers anywhere near making judgments about the arts."
Under US law, the Games Workshop trademark covers "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", plus "video computer games; computer software for playing games". Ebooks aren't included; mysteriously GW didn't go after the print edition. Though trademark law is sufficiently broken that mark owners almost have to be hypersensitive, getting legally heavy about a non-competing product totally unrelated to games or Warhammer 40K is surely over-reaching. Amazon should have ignored the removal request.
Happily for M.C.A. Hogarth, Amazon thought better of it and reversed that decision after her case was taken up by internet pundits and the Electronic Frontier Foundation – whose later headline went, "Trademark Bully Thwarted: Spots the Space Marine Back Online". Our distressed author sold many extra books thanks to the fuss. Games Workshop collected a shedload of bad publicity. The Space Marines were too busy defending civilization to comment.
David Langford fears that applying for a trademark on the word "the" may not be worth his trouble.