In the Future, All Space Marines Will Be Warhammer 40K Space Marines

[Caitsidhe]

No one is suggesting anywhere that GW are trying to trade mark a book, if that is what you are thinking then you are mistaken.

Actually... I and several others here and elsewhere have made the statement that we think that Games Workshop was attempting to use Trademarks in a way to control books. This is tantamount to the same thing as trying to Trademark a book. Either they are ignorant of the law (which I doubt) or they were attempting to game the system and inappropriately use their weight to get their way.

The action GW are taking is with unlicenced use of their registered mark of trade (or registered trademark if you prefer) under the specific term "Space Marine". This is Space Marine with captials used as a proper noun, rather than space marine used as adjective noun. GW are entitled to challenge any use of any of their registered marks of trade that are unlicenced. Any and all unlicenced use of their registered mark could lead to a dilution of the brand and an undermining of their value.

Except, they didn't take legal action. They still haven't. Why is that? They did, in fact, go out of their way in their press release to backpedal like hell saying the opposite of what they sent to Amazon that got the book pulled in the first place. More to the point, why this particular author? Why didn't Games Workshop go after a big fish if they MUST defend their IP? If what you say is true, we should now see the formal case launched in the legal arena. Their threat, after all, to Amazon indicates that is what we would see if it wasn't pulled. When do you expect the case to be filed?

Your example is quite right but in this case irrelevant. If I were to release a book with the term "Scotch Tape" whether it was about the sticky tape or a murder mystery set in the highlands where the only evidence is in the form of a tape I would expect to be asked to change the name so as to not cause confusion with the "popular" brand of sticky tape. Indeed this is quite a weak argument in this case as I doubt the Scotch Tape is a registered trademark when it comes to written works.

If you expect that you would be wrong. You can, indeed, release a book of that name. I don't even think the company that owns Scotch Tape would ask you either, even if they had a Trademark. This has been covered many times now, but it bears repeating; TRADEMARK doesn't apply to works of art and fiction in the way you are suggesting. You cannot Trademark ideas. You can only Trademark a particular image/look/presentation for an identifiable product. Hence, the words "Star Wars" presented in a specific LOGO can be Trademarked, but the words cannot.

[Wolfshade]

Of course they were trying to control the book as it was in their opinion an unlicensed use of their mark of trade, but made no claims over the "whole book"!

I'm sure a letter from a lawyer is legal action. Cease and Desist letters are legal action. You do not need to engage with someone in a court or sue them to have a "legal action". Not everwhere is so litigus, in the UK most concerns of trademark violation are mediated outside of a court. It is very narrow minded to think legal action = law suit.

Scotch Tape is the brand, it is not the name of the object. Any use of their register mark of trade they are duely entitled to challenge. The challenge will be once again against the name of the product and not what the product is.
I have never suggested that trademarks extend to entire works or even parital works. In fact I have been quite strenous to point out that this is a fallacy!

No one is suggesting anywhere that GW are trying to trade mark a book, if that is what you are thinking then you are mistaken.

Trademarks can be both the word in question and the particular presentation of it. Indeed a particular representation could even be a copyright but I digress.

Allow me to quote from Nike's website:

All brand names, product names and titles used on the website are trademarks or trade names of Nike or third party trade mark or trade name holders. You are not allowed to use of reproduce any such trade marks or trade names as this may constitute an infringement of the holders' rights.

Certainly Nike seem to think that they control their trademarks...

Sigh. I am weary of this argument.

[Mr Mystery]

And let's just wind this back a bit....

GW are not trying to claim ownership of this other book. The bone of contention is the use of Space Marine in it's title. GW claim this is their trademark, and as far as the Eurozone is concerned, they are entirely factually accurate in this claim, and this has been the case since 1995.

We know the author has been in touch with GW and their lawyers and that. What we do not know is what has occurred within those conversations, hence my earlier point about jurisdiction. If this is the author trying to get her book released (not sure of wording to be fair) in the Eurozone, well she's utterly stuffed. Trademark is nailed down. This is an entirely different kettle of fish from the US situation.

What is common law trademark? I have absolutely no idea.

GW have not issued a statement saying they are wrong. At all. That's reading between the lines and into a totally different letter. They have stated why they are doing it, and that statement is factually accurate. They own Space Marine (again note the capitals...) as a trademark in the UK and Europe, therefore they have an obligation to defend this, and challenge uses which they consider to be infringing.

Leaving the issue alone, for whatever reason, is simply not an option for them here. GW are their IP. Take that away and there's precious little left of the company worth two hoots.

[Caitsidhe]

Of course they were trying to control the book as it was in their opinion an unlicensed use of their mark of trade, but made no claims over the "whole book"!'

So you feel the cease in desist was made in good faith, and that they now intend to follow up in court? For if they made the threat without a genuine intention to make good on said threat, they have opened themselves up for legal action against them. By your argument (and please note that I'm not trying to be snide) you seem to infer that you feel that their intentions were pure. Fair enough. That means you and I should see something in court now that the book is back up?

I'm sure a letter from a lawyer is legal action. Cease and Desist letters are legal action. You do not need to engage with someone in a court or sue them to have a "legal action". Not everwhere is so litigus, in the UK most concerns of trademark violation are mediated outside of a court. It is very narrow minded to think legal action = law suit.

Fair enough. I'm an American and we often think of such things as the letter as "foreplay," with court being the main event. I will gladly cede you the point that this is in fact a legal step. This of course begs the question of when we will see the next step now that the letter has failed. Either they will follow through or they will not. If they don't follow through, what does that say about their intent?

Scotch Tape is the brand, it is not the name of the object. Any use of their register mark of trade they are duely entitled to challenge. The challenge will be once again against the name of the product and not what the product is.
I have never suggested that trademarks extend to entire works or even parital works. In fact I have been quite strenous to point out that this is a fallacy!

The problem is that you are still all over the map. I can write a book, make a film, or do a painting using the words Scotch Tape all I want. Hell, as a painter I could paint a picture of actual Scotch Tape and there isn't much they can do about it. Can they say "don't do that?" Sure. Can they stop me? No. Saying they have the right to challenge is a bit of a reach as far as a point goes because ANYONE can sue ANYONE over ANYTHING at ANYTIME. That is how the legal system works. You can always try. That doesn't mean you actually have a case. As a member of one of the most "sue-happy" people in the world, I assure you that we are quite familiar with the notion that you can be challenged or sued at anytime. We are also quite familiar with the concept of unethical or frivolous lawsuits for the purpose of bullying and/or getting one's way. That is what happened here. If that isn't what happened here we should see the case go further. Games Workshop is in an odd position now. Either they follow through and take it to the next step or we know they were never serious in the first place, i.e. that they were simply attempting to use the threat without the actual intent. It means that author could, if she could afford it, launch legal case back and have a pretty good chance of winning.

Allow me to quote from Nike's website:


Certainly Nike seem to think that they control their trademarks...

Sigh. I am weary of this argument.

I'm sorry you are growing weary of this. Are you suggesting I couldn't write a book called Nike without the shoe company's permission? Does anyone using this Greek Goddess in their films, comics, books, or art require the rubber stamp of those that make shoes in China? I'm not trying to be anal here. I'm making a valid point. They only thing anyone would have to go to Nike for is IF they tried to sell shoes and called them Nike brand shoes or IF they tried to use a logo that looks like the Nike logo. Are you trying to claim otherwise?

[Mr Mystery]

Bit more from Auntie for consideration.

[url]http://www.bbc.co.uk/news/technology-21409490[/url]

[Wolfshade]

Woohoo progress.

We might not see anything in court as previously said most issues are settled in mediation. We are unaware of any of the conversation that is occuring between the different parties. I would imagine that the asking of amazon to take down the book was an initial defence to protect their trademark till it was determined what exactly was going on. In the same way Apple and Samsung have had their products variously blocked around the world on alleged claims of infringement. Indeed for all we know the parties may have come to an agreement with regard to this and so resolved be back available. Amazon might have decided not to act on this request, after all it was a request and not a mandate.

In a painting it would be very hard to distinguish Scotch tape from any other form of sticky tape such as sellotape for instance. If the image of the packaging was included in your picture then how it was composed would determine whether or not it violated their copyright (as you would have to include their logo to distinguish it).

England & Wales law differs markedly from American law in this respect. If you paint a picture of a Space Marine for example, GW are able to claim rights to your representation of a Space Marine, the background and other details would remain yours. The Space Marine would be a derivative work from which GW holds the original IP/Copyright therefore despite you having painted it it would not be yours and if you sold said image you would be in violation of the commerical use of their brand. Now whether or not they would ever find out is a moot point.

If the term Space Marine was genric, then when the mark was registered there was sufficient time for people to raise objections about it, and if they were valid the mark would never have been granted.

As you can see [url]http://www.ipo.gov.uk/tmcase/Results/4/EU000278028[/url] the class which Nike own their mark for does not cover any literay function so indeed you could produce books about it. So if you made a Nike Christmas tree decoration Nike could challenge you and then you would need to explain that it is merely a representation of asteriod 307 and so not a use of their trademark.

The ounus is on the person challenged to prove that their use of an identical term is such that it would not lead to confusion and/or is seperate enough.

Let us not forget, New Line Cinema came down hard on the pub The Hobbit (trading for two decades) for their use of their brand.

[gendoikari87]

2. Everything in the USSR, North Korea, China and Cuba, and Mongolia, are/were commie countries. Anyone who says different is a looney who flings their dung around their own cage.

That is all.

Flaunting ignorance is not pretty. Again if you haven't read Das Kapital and The communist manifesto, you need to STFU about communism and what is and isn't communist. And probably all economics as well.

[gendoikari87]

Eh, its overrated!

Makes a big point about humanities history being a story of class struggles and completely ignores that human nature is what gives rise to those classes. While it suggest wonderfully Idealistic ideas it just doesn't work in practice and the last 100 years prove it.

Wrong again bob, if you can show me how in any country ever, they put the means of production fully in the hands of the people, then you can speak, but they haven't and no ones even tried. In the USSR they put it in the hands of the government, which is NOT socialism or communism, it's backdoor fascism. And that's what every country that everyone ever speaks of being "communist" is, fascist under the name "communist.

Furthermore, in order for one to claim the title of communist one must first be a socialist, and have moved past a scarcity based economy. As far as I know, no body has created replicator technology yet so anyone claiming anything as communist, is just being ****ing retarded.

Now, there is one case of socialism, it's not a country, and it's right here in america, it's isthmus engineering, and they're doing just fine.

[eldargal]

In other words, Communism is a load of fanciful nonsense that has been used as justification to kill tens of millions of people since 1917.

[Psychosplodge]

Flaunting ignorance is not pretty. Again if you haven't read Das Kapital and The communist manifesto, you need to STFU about communism and what is and isn't communist. And probably all economics as well.

Just because those that have tried and failed don't meet the utopian ideals of the theory doesn't mean they aren't communist.

Basically it doesn't work.

Democracy doesn't work either, but I can't think of a better method beyond me running things...