Fair Use in Fiction

[Kevin O. McLaughlin]

This gets back to what I was saying, above, about not putting the term in a title.

Very different animal here.

"X-wing" used in reference to a space fighter with an X shaped cross section, is an invention of George Lucas, for Star Wars.

"Space Marines" is a standard SF trope dating back almost a hundred years.

Lucas dropping the hammer on someone for making X-wing books about space fighters is legitimate use of trademark law.

Games Workshop trying to shut down an indie writer - because they know DARNED WELL if they go after the dozens of other publishers with works out there using the term "space marine" they're going to lose - is cowardly corporate bullying at its finest.

Luckily the interwebs are already alive about this one, and I suspect that the book in question will be available again before too long.

 

[Kevin O. McLaughlin]

That sort of BS makes me want to write Space Marine books, gotta tell you.

 

[Steerpike]

"Space Marines" is a standard SF trope dating back almost a hundred years.

This isn't really relevant. GW already has at least two U.S. trademark registrations for "Space Marine" and more than that in the EU. The age of the term as a trope has little bearing on its use by GW as a trademark for games or books, unless other publishers were previously using the term as a trademark and not just within their text. The word "tor" is an english word that appeared in plenty of books long before the publisher "Tor" came around, but if you were to use Tor as a trademark for books and as your defense claim it is a commonly-used word in books, you'd lose.

GW doesn't have a U.S. registration for books, so they may be looking at more of a battle in the U.S. (though I wouldn't be surprised to see them file for it now and try to get it), but they can make an argument even on common law rights.

It's a completely different animal at all, though there are differences (not the least of which are in the likelihood of confusion analysis between the two). GW is getting bad PR, though, and maybe they'll re-think this approach.

 

[Zero Angel]

This isn't really relevant. GW already has at least two U.S. trademark registrations for "Space Marine" and more than that in the EU. The age of the term as a trope has little bearing on its use by GW as a trademark for games or books, unless other publishers were previously using the term as a trademark and not just within their text. The word "tor" is an english word that appeared in plenty of books long before the publisher "Tor" came around, but if you were to use Tor as a trademark for books and as your defense claim it is a commonly-used word in books, you'd lose.

GW doesn't have a U.S. registration for books, so they may be looking at more of a battle in the U.S. (though I wouldn't be surprised to see them file for it now and try to get it), but they can make an argument even on common law rights.

It's a completely different animal at all, though there are differences (not the least of which are in the likelihood of confusion analysis between the two). GW is getting bad PR, though, and maybe they'll re-think this approach.

At the same time, they have to defend the trademark or lose it, right? How does Starcraft get away with their space marines? Do they just call them marines in space?

I kinda' think "space marines" as a trademark is insane.

 

[Steerpike]

At the same time, they have to defend the trademark or lose it, right? How does Starcraft get away with their space marines? Do they just call them marines in space?

I kinda' think "space marines" as a trademark is insane.

Just saying "space marines" in a work isn't trademark infringement. You have to be using it as a trademark. If Blizzard started calling their game Space Marines instead of Starcraft, they'd have a problem. But there's no reason they can't refer to 'space marines' within the game, just like there is no reason you can't refer to 'space marines' in a novel.

And yes, generally a trademark owner has to enforce or defend their rights or risk losing them.

GW does not have a slam dunk here. I think it would survive Summary Judgment if they filed an infringement claim. If a representative of GW came into my office with this one, I'd tell them they had enough that I could file a complaint for trademark infringement with on a good-faith basis. I'd also tell them they're going to have a hard time on likelihood of confusion and that it might be a PR problem for them.

 

[ThinkerX]

Hmmm...if I'm following Steerpikes argument here, then this would be safe:

TITLE: 'SPACE BATTLE FOR PLANET YX'

with occasional mention of 'space marines' and 'x-wing fighters' in the text, especially if tweaked from the original (female space marines, and X wing fighters with a crew of ten and rotary gun turrents)

NOT SAFE:

TITLE: 'SPACE MARINES AND X WING FIGHTERS DUEL FOR PLANET YX'

 

[Zero Angel]

Hmmm...if I'm following Steerpikes argument here, then this would be safe:

TITLE: 'SPACE BATTLE FOR PLANET YX'

with occasional mention of 'space marines' and 'x-wing fighters' in the text, especially if tweaked from the original (female space marines, and X wing fighters with a crew of ten and rotary gun turrents)

NOT SAFE:

TITLE: 'SPACE MARINES AND X WING FIGHTERS DUEL FOR PLANET YX'

I think the gray area is when people start talking about "that cool book with the x-wings and space marines". But I just wonder about using those images for advertising. I'm not a lawyer, but I would think using those things in advertising would make it infringement / count as a commercial use.

 

[Kevin O. McLaughlin]

"Space Marine" is set of words describing an well known thing. It's a little like trying to trademark the word "werewolf" and then saying no one can ever use "werewolf" in the title of a book again. (And yes, I am aware that such abuses of the system have been attempted before.) Like "werewolf", "space marine" is a long existing fictional thing with a common definition.

Trademarks stop working when they become terms in common use: which is why Xerox and Kleenex work so hard to keep their brand names from becoming a common term. Trademarks of words with an already existing common meaning are dead at registration - they're indefensible for the same reason that "zipper", "thermos", and "aspirin" are - the words become common use.

They can register the trademark. But they're not going to be able to defend it.

(In other news - after Doctorow, Scalzi, Stross, the EFF, and a few other people hopped on board denouncing Games Workshop in a massive blog and twitter beatdown, Amazon restored the book. It seems to be selling VERY well right now. Better than any of the Games Workshop space marine novels, which has a certain poetic justice to it...)

 

[Steerpike]

Kevin, you are leaving out one of the most important factors, which is the nature of goods or services. "Apple" is a common word describing a fruit and would not be protectable as a trademark for apples. It works perfectly well and gets a good deal of protection in relation to computers. Likewise, with "Space Marine," it can be protected in relation to something like RPGs (which GW has also sought to do), and it certainly isn't a generic term for books. The questions I have about it relate to whether GW has actually used it as a trade mark in relation to fiction, and also whether there is any likelihood of confusion between GW's books and the book in question in the current dispute. As to the latter, I'd say no.

Also, keep in mind that a registered trademark carries a presumption of validity in court, and after five years of consecutive use can be incontestible.

 

[Kevin O. McLaughlin]

Also, keep in mind that a registered trademark carries a presumption of validity in court, and after five years of consecutive use can be incontestible.

Except on the basis that it was or has become a generic term.

With hundreds of examples of generic use stretching back over 80 years, I think that it's about as easy to defend this copyright as it would be to defend "dragon", "werewolf", or "vampire".

A company can trademark the word werewolf; but they would have a very, very hard time defending that trademark because it has an generic meaning which predates the trademark use.

(This is my rough understanding, mind; I'm very good with copyright law, so-so with trademark law, and useless when it comes to patents. )

 

[Steerpike]

Kevin - yes, genericism kills the mark, with the caveat that it has to be generic for the goods and services at hand. I could register the mark "werewolf" for, say, cell phone services with no problem whatsoever. Its generic meaning bears no relation to my use of it as a cell phone carrier. If I tried to register it to sell werewolves, I'd have a big problem

Patents are where I'm best. Probably makes up 80% of what I do. So if you have questions...

 

[ThinkerX]

Patents are where I'm best. Probably makes up 80% of what I do. So if you have questions...

My understanding is that glaciers move faster than patents.

Unless a lot of (major corporate) loot is involved....

 

[Steerpike]

With a patent you're looking at around 2 years to the first office action, and 3 to 4 years to get it issued (sometimes more). Corporate money doesn't actually help the process. You can request expedited examination if you pay for it and meet the requirements, but generally whether you're Apple or a guy in his garage, your patent application goes into the queue at the patent office and is examined in the order received.