According to Wikipedia[1], the first use of the term 'space marine' in literature was the 1932 short story Captain Brink of the Space Marines by Bob Olsen. That's a full 43 years before Games Workshop was founded, and 55 years before Warhammer 40K was introduced.
And the prior usage of the term and concept kept coming strong throughout the intervening half-century.
That would be relevant in a patent case, but not to trademarks, which do not depend on prior use but on when a trade mark first enters the stream of commerce.
I've said it before in other contexts: GW is not really being a villain here, they're just making a show of defending their trademark. If they don't, someone else could start using the mark and then say 'well you didn't defend it when those people were (arguably) infringing on it, so I assumed you had abandoned the mark,' and get away with it. If you're a trademark owner, you have to go through the motions of defending your mark against all possible infringers - a use-it-or-lose-it situation, as it were.
Yes, but "Space Marine" is an extremely weak mark, and evidently it is only registered in one class of goods and services (in the US): "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." [1]
I don't think the claim is baseless, but I don't see how this is a must litigate scenario. I'm pretty sure they could offer a reasonable settlement and remain protected.
They don't have to litigate; they can read a reply from the publisher and say 'oh all right then.' But if a trademark holder doesn't bother to raise the issue with someone else who employs the mark, then their lack of interest can be attacked in court as constructive abandonment. I don't think any money needs to or should change hands.
As an example, I put out a book featuring space marines, nothing happens. I put out some novelty children's outfits featuring space marines, nothing happens. I put out a game involving space marines, GW (reasonably) objects that I'm infringing upon their trademark. I say in response that I put out two other space marine themed products and they didn't care, so I assumed they'd lost interest.
I wouldn't want to be seen as carrying a torch for GW here, I actually have an intense dislike of the company and its history of monopolistic tactics at consumer expense. It was cool firm until about 1984 when the MBAs took over the firsm and adopted a scorched-earth approach to all other firms in the space.
Doesn't a book count as part of the stream of commerce?
Or maybe we should just look at games. Wiki says there was a game actually named "Space Marines" which entered the market in 1977, a decade before Warhammer 40K. http://en.wikipedia.org/wiki/Space_marine#Games
That said, isn't it the case that one can't just take something that exists in common usage and trademark it as-is?
For example, the basic structure of the fairy tale about Aladdin and the magic lamp had been around for a long time, and was clearly not originated by Disney. Consequently, Disney has no right to claim trademark or copyright control over the name Aladdin or or anything generally related to the story. They only get rights over their own work - additions they made to the story, characters' appearances, etc.
Similarly, Games Workshop shouldn't be able to own the phrase 'space marines'. At most, all they should get to control is the use of the name Space Marines to describe the surgically-enhanced cybernetic super-soldiers that are peculiar to their franchise.
Was "space marine" in common usage in 1987, though? The fact that it exists in a long out-of-print pulp novel doesn't mean that everyone understood its meaning. Again, this isn't a patent. All that's required is that, when the trademark was registered, GW's usage of the term was unique and relevant to their business.
As pointed out elsewhere, the grunts in Aliens were not "space marines". Once again: this is a trademark. GW doesn't have a monopoly on the idea of "Sci-Fi Marines". They have a trademark on the specific term "Space Marine" as used within their realms of business. That includes fiction, so the linked post was infringing. Sorry, but it was.
Arrgh. AGAIN: it's not a patent! "Prior art" proves nothing. If this figure's manufacturer was not a going business venture in 1987 (or whenever GW filed that trademark) then GW was entirely within their rights to file such a trademark.
And even if this was 100% contemporaneous, the party with standing to challenge that trademark would be the toy company, and not the linked post. The remedy would be to immunize the toy company from GW, or perhaps to award them damages due to GW's mark causing loss of sales.
He's not claiming that their trademark is invalid because of "prior art", he is saying that they should not have a trademark on the term in the same way that Tropicana should not be permitted to have a trademark on "orange juice".
That is to say, "space marine" and "orange juice" are both clearly descriptive marks. That "space marine" is a descriptive mark is evidenced by it's long history of usage.
The article says GW is claiming an implicit or common law trademark rather than a registered one. The rules for that are far more grounded in equity than the rule based statutory system.
Edit: that is to say the expansion into the book market is a common law extension. To be clear the mark was registered in the game market.
As other people have pointed out, in the United States, GW's trademark for "Space Marines" does not include fiction in their "realms of business." So this is extremely dubious on its face.
Furthermore, under UK law, a trademark can be invalidated on "absolute grounds" which "cover defects in the trade mark itself":
The most common absolute ground for invalidation is that the trade mark is descriptive of the registered goods and/or services, or that it is generic for those goods/services, or otherwise non-distinctive and should therefore be free for everyone to use.
And, actually, according to that law, anyone can apply to have the mark declared invalid on absolute grounds.
The underlying issue at hand -- and this applies to American law as well -- isn't precisely about "prior art." It's about whether the phrase "space marine" is already too generic for the trademark to hold, especially when applied to fiction. "Marine" certainly isn't a GW trademark; this whole claim is predicated on the notion that it becomes uniquely theirs when the word "space" is put in front of it.
...so the linked post was infringing. Sorry, but it was.
That's not the question, is it? The question is whether it should be infringing.
The most basic thing you and everyone reading this needs to take away is that "should" != "law". Beyond that learn what Registered Marks are, the rights and responsibilities of owning one. It's not hard to get a correct if layperson's understanding. (something 90+% of posting online lack)
No. You can totally do that as long as nobody has trademarked it in a similar context.
Only as long as you pass the requirements of local trademark law, which space marine arguably doesn't in most jurisdictions when used with it's generic meaning:
It's fine to call a pane of glass embedded into a wall a window, it's fine to call a certain kind of fruit an apple and it should be fine to call a marine serving on a space ship a space marine, regardless of any trademarks involving these terms.
But can the Coca Cola Company enforce its "Coke" trade mark against purveyors of fossil fuel derived coke products? It's silly to think that Coca Cola would try; and nothing at all like GW trying to bogart parts of the common sci-fi vernacular.
Because there's a nonzero risk the judge won't order Warhammer to pay the defendant's legal fees. Meaning that even if the author of the book "wins" in court, he might still lose a lot of money.
And if he doesn't have a corp or LLC set up to sell the book, or hasn't jumped through all the bureaucratic hoops involved correctly, there's a nonzero risk that the Warhammer people could get a multi-million dollar judgment on him and take his house, cars, kid's college fund and most of his future salary. (The fact that he says he's using the proceeds from the book to pay for his daughter's schooling actually implies he doesn't have one of these legal structures set up.)
That's how the US legal system works, unfortunately.
Disclaimer: I am not a lawyer and this is not legal advice.
Because Games Workshop employs the kind of lawyers that consider petty things like the truth and other peoples IP to be inconveniences to be worked around.
This is where common law systems really bother me.
When the legal system is set up in such a manner that defending oneself in civil court is more-or-less impossible for people who aren't wealthy enough to pay hundreds of dollars per hour for legal representation, the phrase "equal protection under the law" begins to sound like nothing more than a cruel joke.
And the prior usage of the term and concept kept coming strong throughout the intervening half-century.
1: http://en.wikipedia.org/wiki/Space_marine