If you have a brand that you want to protect, go get a trademark registered. It'll cost you a few thousand dollars at most. Less if you play not-a-lawyer-lotto and do it yourself.
The problem with using generic terms is that the trademark doesn't trump the generic use.
As you can have books about anything, and you're free to label your book accordingly (ie in a desciptive manner), trademarks on book titles are probably hard to enforce as long as the author is not actively deceptive by choice of artwork, book design etc (ask the trademark lawyer of your choice for a definitive answer).
Having a book called 'The Life of Harry Potter' about an actual person with that name should be fine (this is not legal advice ;)). Having a book about a fictuous sorcerer of that name is a problem if you're not associated with JKR. At that point, copyright law might come into play as well.
Common words like "face" and "book"? "My" and "space"? "You" and "tube"? "Fox" and "news"? "Seven" and "eleven"? "Virgin" and "records"/"atlantic"/ ... ?
You can use a trademark in a book title. There's a book titled "Inside Apple: How America's Most Admired--and Secretive--Company Really Works" and another "One Click: Jeff Bezos and the Rise of Amazon.com." This is nominative use of the trademark.
You can use a trademark in a title even when the book isn't about that trademarked product. There's a book titled "Amazon Warriors" which has nothing to do with Amazon. This is trademark fair use. Some trademarks create new words in order to avoid this possibility.
So no, a hypothetical "My Space" could not forbid you to write a book titled "My Space and Time". There are exceptions, like if there's a reasonable likelihood of confusion. For example, the title "My Space and Time Magazine Award Winner" is almost certainly a no-no because it implies endorsement which isn't present.
Using "space" as a prefix is a cliche in science fiction. "Spaceship", "space station". "The spacelanes have been packed with spacetraders this whole space year. The space police should send some space fighters on space patrol."
This got quite a lot of discussion or reddit the other day and someone supplied a link to term used in fiction from the 30's. it predates this company by about 50 years.
That is unlikely. What is more likely — as there is significant historical evidence of it — is that GW has a legal department entirely run and staffed by the closest equivalent to ghouls we have.
>There's no reason to expect that the people currently employed at Games Workshop know that the company had borrowed the term in the first place.
You say that like sticking two generic words next to each other is somehow novel or noteworthy. I wouldn't call it borrowing or infringing when the thing in question is utterly mundane.
The problem is not prior art, but the descriptive or generic nature of the term.
Just because there's a software company selling music or even a music label with trademarks on 'Apple' doesn't mean I cannot call a song about apples 'Apple Song'. See the case cited in section b of [1] as to why 'space marine' might not be the best choice if you want to put a trademark on a book's title.
'Prior art' is helpful insofar as it establishes the nature of the term in question. The term 'space marine' is not as widely used as I initially believed (eg it's neither used in Starship Troopers nor Aliens, and might not be in Starcraft - did not verify with the game itself and online sources are ambiguous).
However, it can still be found in a lot of places:
Misfit by Heinlein, Grayson Space Marine Corps in David Weber's Honorverse, Doomguy and the Quake marines, the Star Blazers TV series, Death of the Daleks, the movie 'Space Marines' from 1997, Colonel Scott of the US Space Marines from Moonraker, to name the ones I could come up with.
Using the term inside a work might be less dangerous than using it in the title. IANAL, but GW might be able to argue that using it in a title is going to trick consumers into think it is an officially sanctioned GW book.
""" Noting the inherent weakness of plaintiff's title, the court commented that the words chosen by Random House [the defendant] were an apt description of its book, and therefore in the public domain. Rejecting plaintiff's unfair competition claim, the court further noted that because of the weakness of plaintiff's title, combined with the differences in the overall look and feel of the two books (including Random House's prominent use of its distinctive logo on the spine and back jacket) there was no likelihood of confusion. McGraw-Hill Book Company v. Random House, Inc., 32 Misc. 2nd 704, 225 N.Y.S.2d 646, 132 U.S.P.Q. 530 (1962). """
> Its trademark claim covers the use of the word in connection with many aspects of tabletop gaming and video games, she said, but also extended to published works.
One should note that they claim trademark by 'common law', ie they argue that the association of the term 'Space Marine' with Warhammer 40k is so well-established even in the realm of ebooks that they own a de-facto trademark without having a registration (yet).
Basically, GW is the largest fish in their pond. They are trying to expand into a bigger one and are testing the waters by eating their first small fish.
Thanks for the clarification. I haven't seen the trilogy in a while and couldn't recall for sure. I did a quick search online and saw references that said "space marine" and also "colonial marine" so I figured it might have referenced in the movie.
I play a lot of computer games and have heard of Warhammer 40,000. I have never heard the phrase "Space Marine" in relation to Warhammer though. No doubt if you play the game it's impossible not to, but expecting people to be familiar with Warhammer AND know that they use Space Marine seems folly. Especially since it sounds pretty generic. http://en.wikipedia.org/wiki/Space_marine
I've heard of it, but knew nothing about it. There's a long list of space marines in fiction I would have pointed out before someone pointed out that this franchise also has them.
A nifty revenge would be for the net to repurpose the term "space marine" as a synonym for some disgusting activity, like vomiting. For example, IP lawyers makes me space marine all over my carpet.
I'm surprised there isn't already a Streisand-like term for "misappropriating something very common as your trademark", as in the hypothetical "did you see last week when Oracle tried to Space Marine the Internet Oracle archives?"
An even better ploy would be a large effort of people publishing e-books of short stories all with the term space marine in the title and the text.
IANAL, but I believe the more widely used and genericized a term becomes, the more likely the trademark is to become unenforceable unless Games Workshop is willing to sue everyone who gets involved.
The really absurd thing about the issue is how it is possible that someone gave they the exclusive right to use what in the end is just two standard english words stuck together.
No, not like Internet Explorer. It's more like an application for browsing the Internet called The Internet Browser, or a device for toasting bread called The Bread Toaster, or a seaport for planes called The Air Port.
It only seems absurd becaus you don't realize that it's only the exclusive right to use those words in a commercial context to describe a product or service in a specific field.
> It only seems absurd becaus you don't realize that it's only the exclusive right to use those words in a commercial context to describe a product or service in a specific field.
Actually it seems absurd because it is over-broad: "but also extended to published works."
Are they going to try and pull the 1959 book Starship Troopers for trademark infringement?
The literal term 'Space Marine' is not as common as I thought, which isn't really that surpsising because if virtually all your marines operate in space, do you really need to add it to their name?
However, I do believe that space marine is the most common generic term to refer to soldiers-in-space ooc (ie when discussing the archetype and not specific implementations like Heinlein's 'Mobile Infantry' - keep in mind there are actual space marines in some of his other stories, Alien's 'Colonial Marines' or Starcraft's 'Confederate Marines').
Actually in the US, which is relevant because the claim was on an Amazon US hosted product and against a US writer, Games Workshop only has the following trademarks for "SPACE MARINE":
1. Registration Number 2100767
- Goods and Services IC 028. US 022. G & S: 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. FIRST USE: 19870900. FIRST USE IN COMMERCE: 19871000
2. Registration Number 1922180
- Goods and Services: IC 009. US 021 023 026 036 038. G & S: video computer games; computer software for playing games.
There are no rights for these trademarks on books or ebooks. The reference to "extended to published works" in the BBC article refers to Europe only. In fact, the referenced lawyer even mentioned an additional high burden in the US of challenges stemming from the First Amendment.
1. Trademark rights are limited to the territory of the government that grants them. A European trademark cannot be enforced in the US. GW can make claims in the US based on their US trademark, but their US trademark does not include Class 16, the class upon which they told me they were making their claim.
2. My e-book is not "printed matter." There is a trademark class recommended for covering e-books and other forms of entertainment like radio and television. Games Workshop’s trademarks in the US, UK and Europe do not include this class.
3. The paperback version of Spots isn’t being sold in Europe; I would have to toggle a specific distribution channel to approve Createspace’s distribution to Europe and that toggle is currently off.
A quote: "The claim emerged when it was used to get an American ebook about the futuristic soldiers taken off Amazon."
Surely there's a way to construct this sentence that doesn't move two key words so far apart. The distance between the related words "get" and "taken" is seven interloping words -- this isn't world class (for that one needs to learn German) but it's definitely a contender.
How about "The claim emerged when Amazon was forced to pull an American ebook about the futuristic soldiers"?
There was a time when publications employed as many editors and proofreaders as writers. (sigh)
But apropos the topic, I was once forced to stop using the title "Sun Computer" for my sunrise and sunset computer page. The complainant? Sun Computer, of course. My page appeared before theirs in search engine listings, so they hired a lawyer to write and object to my use of the word "sun". After trying to apply common sense, I gave in.
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[ 514 ms ] story [ 3439 ms ] threadIf you have a brand that you want to protect, go get a trademark registered. It'll cost you a few thousand dollars at most. Less if you play not-a-lawyer-lotto and do it yourself.
this is just silly.
As you can have books about anything, and you're free to label your book accordingly (ie in a desciptive manner), trademarks on book titles are probably hard to enforce as long as the author is not actively deceptive by choice of artwork, book design etc (ask the trademark lawyer of your choice for a definitive answer).
Having a book called 'The Life of Harry Potter' about an actual person with that name should be fine (this is not legal advice ;)). Having a book about a fictuous sorcerer of that name is a problem if you're not associated with JKR. At that point, copyright law might come into play as well.
if "my space" was a brand, would they _really_ be able to forbid me to publish a book called "my space and time" based on that trademark ?
if they actually could, the world would be even sillier than previously thought. and I'd see it burn, gladly.
You can use a trademark in a title even when the book isn't about that trademarked product. There's a book titled "Amazon Warriors" which has nothing to do with Amazon. This is trademark fair use. Some trademarks create new words in order to avoid this possibility.
So no, a hypothetical "My Space" could not forbid you to write a book titled "My Space and Time". There are exceptions, like if there's a reasonable likelihood of confusion. For example, the title "My Space and Time Magazine Award Winner" is almost certainly a no-no because it implies endorsement which isn't present.
Using "space" as a prefix is a cliche in science fiction. "Spaceship", "space station". "The spacelanes have been packed with spacetraders this whole space year. The space police should send some space fighters on space patrol."
From the NewsRadio episode "Space": "Your space pod is so cold and drafty." "Fine, I'll get a space heater." https://www.youtube.com/watch?v=8NDiBCD55-Y#t=10m40s
You say that like sticking two generic words next to each other is somehow novel or noteworthy. I wouldn't call it borrowing or infringing when the thing in question is utterly mundane.
Just because there's a software company selling music or even a music label with trademarks on 'Apple' doesn't mean I cannot call a song about apples 'Apple Song'. See the case cited in section b of [1] as to why 'space marine' might not be the best choice if you want to put a trademark on a book's title.
'Prior art' is helpful insofar as it establishes the nature of the term in question. The term 'space marine' is not as widely used as I initially believed (eg it's neither used in Starship Troopers nor Aliens, and might not be in Starcraft - did not verify with the game itself and online sources are ambiguous).
However, it can still be found in a lot of places:
Misfit by Heinlein, Grayson Space Marine Corps in David Weber's Honorverse, Doomguy and the Quake marines, the Star Blazers TV series, Death of the Daleks, the movie 'Space Marines' from 1997, Colonel Scott of the US Space Marines from Moonraker, to name the ones I could come up with.
[1] http://www.copylaw.com/new_articles/titles.html
""" Noting the inherent weakness of plaintiff's title, the court commented that the words chosen by Random House [the defendant] were an apt description of its book, and therefore in the public domain. Rejecting plaintiff's unfair competition claim, the court further noted that because of the weakness of plaintiff's title, combined with the differences in the overall look and feel of the two books (including Random House's prominent use of its distinctive logo on the spine and back jacket) there was no likelihood of confusion. McGraw-Hill Book Company v. Random House, Inc., 32 Misc. 2nd 704, 225 N.Y.S.2d 646, 132 U.S.P.Q. 530 (1962). """
http://eu.battle.net/sc2/de/game/unit/marine
But not books.
> Its trademark claim covers the use of the word in connection with many aspects of tabletop gaming and video games, she said, but also extended to published works.
Basically, GW is the largest fish in their pond. They are trying to expand into a bigger one and are testing the waters by eating their first small fish.
Obviously the 1930s has both trumped.
Was that before or after 1959 when Starship Troopers came out?
Starship Troopers is about "Mobile Infantry." This is about the term "Space Marine" not the concept of marines in space.
I guess Nissan has some prior art here.
IANAL, but I believe the more widely used and genericized a term becomes, the more likely the trademark is to become unenforceable unless Games Workshop is willing to sue everyone who gets involved.
http://news.cnet.com/Microsoft-settles-trademark-case/2100-1...
Actually it seems absurd because it is over-broad: "but also extended to published works."
Are they going to try and pull the 1959 book Starship Troopers for trademark infringement?
However, I do believe that space marine is the most common generic term to refer to soldiers-in-space ooc (ie when discussing the archetype and not specific implementations like Heinlein's 'Mobile Infantry' - keep in mind there are actual space marines in some of his other stories, Alien's 'Colonial Marines' or Starcraft's 'Confederate Marines').
http://books.google.com/ngrams/graph?content=Space+Marine...
1. Registration Number 2100767 - Goods and Services IC 028. US 022. G & S: 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. FIRST USE: 19870900. FIRST USE IN COMMERCE: 19871000
2. Registration Number 1922180 - Goods and Services: IC 009. US 021 023 026 036 038. G & S: video computer games; computer software for playing games.
There are no rights for these trademarks on books or ebooks. The reference to "extended to published works" in the BBC article refers to Europe only. In fact, the referenced lawyer even mentioned an additional high burden in the US of challenges stemming from the First Amendment.
Source: USPTO Trademark Electronic Search System (TESS), http://tess2.uspto.gov
Additional points from the author herself,
<quote>
1. Trademark rights are limited to the territory of the government that grants them. A European trademark cannot be enforced in the US. GW can make claims in the US based on their US trademark, but their US trademark does not include Class 16, the class upon which they told me they were making their claim.
2. My e-book is not "printed matter." There is a trademark class recommended for covering e-books and other forms of entertainment like radio and television. Games Workshop’s trademarks in the US, UK and Europe do not include this class.
3. The paperback version of Spots isn’t being sold in Europe; I would have to toggle a specific distribution channel to approve Createspace’s distribution to Europe and that toggle is currently off.
</quote>
Source: http://mcahogarth.org/?p=9999
Surely there's a way to construct this sentence that doesn't move two key words so far apart. The distance between the related words "get" and "taken" is seven interloping words -- this isn't world class (for that one needs to learn German) but it's definitely a contender.
How about "The claim emerged when Amazon was forced to pull an American ebook about the futuristic soldiers"?
There was a time when publications employed as many editors and proofreaders as writers. (sigh)
But apropos the topic, I was once forced to stop using the title "Sun Computer" for my sunrise and sunset computer page. The complainant? Sun Computer, of course. My page appeared before theirs in search engine listings, so they hired a lawyer to write and object to my use of the word "sun". After trying to apply common sense, I gave in.
The full story: http://arachnoid.com/lutusp/sunrise/index.html#The__Sun_Comp...