Space Marine - trade mark, or literary trope?

My recent posts, on  the term 'Space Marine' and Games Workshop's claim to have trade marked it, have generated a lively response, as I believe it has done on other blogs that have addressed the topic.  Having expressed my own views on the matter from the point of view as how an ordinary Joe or Jo might see it, I bethought myself that perhaps a little research would be in order.

This proved rather more interesting than I awaited.

To start with, I looked up the incident that led to the current furore.  This was Games Workshop issuing threats against one M.C.A. Hogarth, the author of e-books, including Spots the Space Marine, and Amazon the purveyor of said e-books.  It has to be said that GW noted that it was obliged to protect its trademark for 'space marine' or else risk losing its trademark status and the protections it afforded.  I'll come back to this.

Adeptus Astartes - there you are:
An easily recognisable  - iconic even -
GW Space Marine trademark.

So Amazon pulled the title, unwilling to defy the GW Company, and M.C.A. Hogarth also declined, unless she received a good deal of financial assistance from third parties, to enter lists.   The spirit was willing, for sure, but the pocketbook was weak.  As is the case for the little guy almost invariably when faced with threats and legal intimidation. (Incidentally, it gets worse.  People can come in as backers in a case like this, but if costs are awarded against their backee, they may find themselves liable to stump up for those in addition to moneys already pledged.  Apparently this happened in a libel case, and the right-wing loser's pals got badly stung.  Very well, but it makes it that much tougher for the ordinary Jo in this case).

As a result of Amazon's action, the ordure struck the rotors; several authors came in to the argument in defence of Ms Hogarth, and Amazon, I gather, has reversed its decision and reinstated the title.

Space Marine: 1936

A few things also came to light during the course of my (rather hasty) research.  For one thing, at least three SF writers are known to have used the expression space marine(s) in story, well antedating GW's use of it: the first being one Bob Olsen (Nov 1932) "Captain Brink and the Space Marines" Amazing Stories Vol 7 Nr 8, and (1936) "Space Marines and the Slavers" AS.  The much more well-remembered E.E. 'Doc' Smith used the term in his Lensman series from 1934 to 1959.  And I already knew that Robert Heinlein (1959) had also used the expression.  I don't doubt GW has acknowledged the prior authorship and coinage, but did they seek permission or licence to use it?  If not, why should GW require permission or licence from anyone else?

Further, a certain video game company (Blizzard) has been using 'Space Marine' or 'Space Marines' in their operations at least since 1993.   Did GW issue a challenge?  Indeed, it did.  Back in 1996 or thereabouts.  GW lost.  Where does it leave their claim in respect of Amazon and Ms Hogarth?  Looking bally rocky, it seems to me.

So what is a trademark?  It is, according to Wikipedia, "...a recognisable sign, design or expression that identifies [distiguishes] a product or service of a particular source from others.  The owner of the trademark can be an individual, business or any legal entity."   Clearly we haven't any quarrel with GW's trademark stylised double-headed eagle nor in the design of its figures.  They are legitimately GW's intellectual property (IP) and trademarkable (and copyrightable) according.

It seems to me this - qua image -
would be trademarkable.

It is the expression 'space marine' as such that is the sticking point.  For one thing, it is clearly a literary trope well and truly in the public domain after its first use in the 1930s.  No question of E.E. Smith or Robert Heinlein infringing copyright.  If it were a case of trademarking the image to the right of this part of my text (say), I don't think anyone would have any problem with that.  The expression 'Space Marine' pure and simple is too generic to be trademarkable.  Bear in mind, Ms Hogarth was not developing figures, but using the expression in precisely the same milieu as did Olsen, Smith and Heinlein: a Science Fiction story.  Having said that, it appears that GW is also entering the literary field.  A bit late in the day to start claiming trademark on account of a literary interest.

Consider:  Space is seen as much like an ocean lying between planetary 'landmasses'.  It is easy to see why, given human history, and just as easy to see why space vehicles are thought of as ships, or vessels, rather than as chariots or carriages.  And, given the presence of  soldiery customarily carried upon military ships of war to effect shore landings or for ship defence, usually called 'Marines', what would you have?  Probably the most famous would by the American variety: The US Marine Corps.  Since they operate in space - or in extraterrestrial environments - Space Marines.  It's a trope.

It has been pointed out that GW's claim to Space Marine characters in the context of their Warhammer 40000 AD game - i.e. in a space operatic setting of the year 40,000 AD or thereabouts - in effect claims an exclusive right for the expression in any other setting.  In other words, every time the word Space Marine is heard,  GW's Space Marine figures and designs must be inferred.

Here's a the implication.  I design a story: Science Fiction, set in the year 19,042 Anno Domini in which lobster-like interstellar space conquerors - call them Nippers -  invade the Solar star system, at last being brought to a standstill on Mars.  The Earth despatches space-going vessels, loaded with troops that are to effect a landing on Mars, recapture the Henderson Space Field (lying near a valley feature called Waddell Canal) from Nipper hands, and finally to drive the Nippers off the planet.

The Earth troopers - behaving in precisely the same manner as the USMC in an analogous situation - effect a landing, withstand heavy suicidal counterattacks, wrest the Henderson Field from the Nippers, and, after a prolonged campaign in which the Nippers continually attempt to reinforce the Mars garrison holding out in Waddell Canal, reconquer the planet.  The Nippers retreat to Jupiter, leaving isolated garrisons in the asteroid belt, intending hang on to as much of their solar conquests as they can.  The Space Marines  Starship troopers  United Space Marine Corps - nope, that's been done, too - MEXFORCE (Mars Expeditionary Force)  then undertake a campaign of planet hopping before finally threatening to overwhelm the Nipper Base of Operations somewhere in the Oort Cloud.

I found this image whilst trawling through others.
Whose (if anyone's) intellectual property is being stolen here?

I can't use the term 'Space Marines' in such a story?   Really?  I've made the analogy pretty damned obvious.   I'd have to use Space Marine, surely?  How could I write the story without it - as clearly the whole point is to retell the story of the US Marines' WW2 campaign in an exterrestrial setting?

It turns out that there is a difference between TM as trade mark and the Circled R, which means 'registered trade mark'.  The protections of the latter are rather the greater, though the former does indeed offer some protection against wrongful use of the owner's IP.  But registration does require an assessment by the registering authority as to whether a trademark is indeed registrable.  That really suggests that one operating a TM has to be very careful in enforcing what it sees as its rights.  If it transpires its TM isn't valid, or the claim is otherwise specious, the claimant might have a problem.  Imagine if the outfit that accidentally TM'ed the word Nazi (apparently it was a typo), thought they would try and make good on the TM.  Ye-e-es.  Ri-i-ight.

Well, Donald Trump did try to copyright 'You're fired!'  Just because you're a Fat Cat doesn't stop you from being a complete and utter clod.

I mentioned earlier that GW alluded to its obligation to defend its IP (and presumably its trademarks) in order to obviate their lapsing (see Games Workshop: Legal Page 4).  It is true that a failure to defend IP will lead to its entering the public domain after a period of time (I can see a fishhook in this, but that's for another time).   GW did not have to be so quick off the mark.  Not even close.  It might have been a smart plan to consider this more carefully, whether indeed Ms Hogarth's use would impact in any way upon their  own product; whether the thing was sufficiently serious to warrant a follow-up.  If it came to a question of the trademark lapsing, GW could always have argued that in the circumstances, they considered Ms Hogarth's use of the expression would not impact upon their product in any way (not in the same market, say).  That is a perfectly acceptable line to take (if they can persuade the judge).  The time to test the trademark would have been if some figure designer, using his (or, as it might be, her) own unique designs wholly dissimilar to the GW, but under the label Space Marine Millenium 20 (say), went into business selling figures.  Her (or maybe his) counter-claim in re restraint of trade might have had more traction...

As  final point, GW might well have painted themselves into a corner.  It seems that there is a protection (sort of) against the Fat Cattists heavying their slenderer brethren.   If the Fat Cattist fails to go through with the threat, that leaves friend Fat Cattist liable to a counter-action.  It is doubtful that Ms Hogarth or Amazon will take this up, but, if GW simply allows the matter to drop, then it can count itself lucky if they don't.

Some sources:
http://tvtropes.org/pmwiki/pmwiki.php/Main/SpaceMarine TV Tropes
http://mcahogarth.org/?p=10593 M.C.A. Hogarth
Games Workshop: Legal Page 4.  Upon first reading it all sounds so reasonable, and most of it is. But... I seem to have seen something like this before.  I may get back to you on this...

Since I wrote this, I have discovered that Cadbury has successfully trademarked the colour purple.  I am not making this up.  The Cadbury company has already heavied a small UK choc making outfit who attempted to use the colour purple for its Christmas range - purple being associated with the Nativity.  This range, by the way, was being offered for charitable purposes.  It could be argued that they trademarked  the particular shade of purple that has been assocated with Cadbury for nigh on 100 years.  If the trademark authority bought that argument, they were clearly being short-sighted to the point of clinical blindness.  As for the Cadbury company, you can tell it is no longer owned by anyone associated with the Society of Friends, eh?

It wouldn't matter a hoot what shade of purple the small outfit was using.  Cadbury would argue that as the ordinary consumer is not likely to be all that skilled in discriminating between shades of a colour, this or that particular shade being associated with Cadbury, might suppose the small outfit's product was part of or endorsed by the Cadbury company.  It is a cast iron, brass bound, 100% guarantee that Cadbury has stolen from the Commonweal not only all shades of the colour purple, but I will bet the colour violet and darker shades of lilac as well.  

Just imagine what will happen if and when the Cadbury company discover a toilet cleanser that uses purple packaging... Good luck the Cadbury Company.

But I've known for a long, long time that the crazies have taken over the nuthouse....