No you are not. You are misrepresenting this case to suit a company you seem to work for.
I'm 23. I live in Melbourne (the clue's in the name.) I don't work for Games Workshop. I'm not even a lawyer; just a law student. If I've misrepresented the law in some way, I would be happy if you could explain how.
Thank god legal professional never lie by omission or otherwise... especially when not under fear of perjury and behind a veil of anonymity.
I don't even know what that's supposed to mean. If you're trying to play on the evil lawyer stereotype, well, congratulations. You're very imaginative.
Like what? What precisely is wrong?
Can't go into specifics? Or won't... I think we ALL can figure out why.
Won't. Because I thought it would just make you angrier.
But since you asked.
GamesWorkshop's legal threat is entirely baseless and should be considered a criminal use of intimidation. I wish judges would throw the book more forcefully at both corporations and legal practices who send such threats without backing of a legal ruling.
As I explained above, if Games Workshop does not contest the use of any terms similar to its trademark through litigation, that inaction could later be used against them in proceedings to strike their trademark from the registry. While this system of litigation is distasteful and I certainly don't care for it, Games Workshop's lawyers are in fact ethically obliged to act in this manner.
Bear in mind that there are systems in place to prevent abuse of process through frivolous lawsuits. The bar is quite high, and Games Workshop's actions would not qualify in this circumstance. Note that there is a distinction between a lawsuit that has little chance of success and a frivolous lawsuit. One common element is whether or not the lawsuit has been brought for an ulterior motive. There is no ulterior motive here. Games Workshop's stated motive (to prevent the author of the offending novel from infringing on their trademark) is their actual motive. It is a legitimate motive, and they have a prima facie case. It may ultimately not be supported by the evidence, but it is enough that a judge should get a chance to look at it.
Example being, people aren't violating the Coke trademark to sell a sack of solid fuel labelled "Coke".
The use of "Coke" (the carbonaceous fuel) as a trademark would be invalid, as coke (the fuel) is a term descriptive of many possible products - such as coke sold by a competitor. Therefore, in your example, there is no trademark infringement because there is no trademark.
This would be like me registering a trademark for "cars" and selling actual cars. There is nothing that distinguishes my cars from my competitor's cars. The ultimate purpose of a trademark is to distinguish products. If there is no distinction, there is no trademark. Games Workshop brings litigation of this nature specifically to enforce the distinctiveness of their (now very generic) mark.
The ONLY place the GamesWorkshop "Space Marine" trademark is valid is when referring SPECIFICALLY to the Space Marines of WarHammer 40'000, not when referring to ANY futuristic military warrior in space.
Because trademarks are registered in respect of defined classes of goods, Games Workshop's "Space Marine" trademark is enforceable (read: valid) in respect of those defined classes of goods. In this specific case, ebooks. Any good in that class with a confusingly similar name is a potential infringement. GW's trademark is not "only valid" when referring to Games Workshop's specific product, and such a statement is in fact ridiculous upon examination, as it would logically follow that a trademark is only valid when referring to the specific trademarked product; this would make it impossible to actually prevent trademark infringement, as your trademark is not "valid" in respect of the infringing product.
Because of prior art referring so futuristic soldiers as "Space Marines". And continuously for the past half century I might add.
The presence of prior art is not relevant. You are confusing trademark and copyright law. Unless that art was used as a common law or registered trademark, it does not invalidate Games Workshop's trademark.
Yes you damn well can. Anyone can.
You have officially pissed me off.
I'm sorry for pissing you off. But you cannot release a game called "Space Marine"; at least, not without the addition of a distinctive element that would distinguish it from Games Workshop's (or potentially Relic/THQ's, but that's obviously not clear at the moment) registered trademark for "Warhammer 40,000: Space Marine," a video game released in 2011.
An example. Say I want to release a game called Dawn of War. This is trademark infringement, even though the trademark I would be infringing upon is technically titled "Warhammer 40,000: Dawn of War." This is because from a consumer perspective, and indeed in common parlance, the game is simply called Dawn of War, just as "Warhammer 40,000: Space Marine" was simply called Space Marine.
The release of a game called "Space Marine" would infringe on GW's trademark (specifically their trademark for the video game) because it is confusingly similar - that is, a consumer could confuse the two products. This is not impossible; people get DayZ and The War Z confused, and they are much more distinct than two games, one of which is called "Warhammer 40,000: Space Marine" and the other is called "Space Marine."
This is very basic stuff. I am basically explaining how trademark infringement works. I should not have to do this.
No they do. They could make threats and count on scaring them off with high legal fees but they don't.
This popped up on a cursory Google search. I don't know the validity of the source (literally plucked this off Google in ten seconds) but you should read the part about Coca-Cola's "vigorous" protection of their trademark. Then you can come back and tell me that Coca-Cola don't sue people for trademark infringement, and this time you'll know you're wrong ahead of time.
GamesWorkshop is making this threat because they are NOT good hearted. They have so obviously made this threat in bad faith.
I don't see what's so hard to understand...
Which of these is more plausible?
- that Games Workshop is prepared to embark on expensive litigation at the risk of making themselves look like total asshats to their own fans because they are evil and like stomping on the dreams of aspiring young authors,
- that Games Workshop is prepared to embark on expensive litigation at the risk of making themselves look like total asshats to their own fans because if they do not do so, they risk losing control of their trademark in the future.
Why is your assumption that Games Workshop is run by moustache-twirling cartoon villains instead of businessmen who just want to make money?
This isn't like a company trademarking the name "Coke" for a beverage.
This is like a company trademarking the name "coke" for the type of fuel known as coke. Now no one else can sell coke as "coke" , to spite the fact everyone has know this common fuel as coke and sold it as coke for years. That's blatantly abusing the legal system not to protect your own brand but simply to screw others over.
Their trademark is. not. valid.
You cannot do that because, as explained above, "coke" is a descriptive term in respect of fuel. You cannot trademark it. It simply does not distinguish your product at all.
You are essentially arguing that the term "Space Marine" is descriptive in the same sense as the word "coke." That's a genuine concern, but it's something a court needs to decide. The question would be if Space Marine is a descriptive term in respect of tabletop games/ebooks/video games, in the same way that coke is in respect of fuel. It really isn't exactly the same as the coke situation - a better example would be if Games Workshop sold miniature wargames under the trademark "Miniature Wargames." The term "Space Marines" is a little more distinctive than that.
Honestly, it could go either way. On the one hand, Space Marine is a very weakly distinctive term. Then again, so is Starship Troopers and Rogue Trader; they're both still valid trademarks. Furthermore, as a registered EU trademark, the term "Space Marine" is entitled to a presumption that it is distinctive until proven otherwise. And Games Workshop has sold video games and books under that mark.
More importantly, though, is that this is a matter typically decided by courts, not random persons on the internet with access to a caps-lock key.
Simply because they applied for it and got it rubber stamped doesn't throw all precedent out of the window.
I don't think you understand how a trademarks registry works. If it is registered, it is a trademark. That is how a trademarks registry works.
In this specific case, Games Workshop is alleging the existence of a common law trademark in the term "Space Marine" due to the fact that the offending ebook is outside the jurisdiction of its registered EU mark. However, there's a definite possibility that they have such a common law mark; it depends on their actual use of the term in the marketplace.
Stop and think what happens if GamesWorkshop does nothing... they will not be hurt at all.
People will be able to write books with "Space Marine" in the title and it won't affect their business in the damn slightest bit. Probably it will be improved by having people generally more interested in futuristic warfare.
Perhaps you have read nothing I have written. I am thinking that this is a possibility.
A crime writer don't need to own the trademark of the term "Private investigator" to write a story about a private investigator.
This is correct. If his book was called "The Private Investigator," however, or "Jack Jackson: Private Investigator," he would need to own a trademark to that effect.
It's interesting you brought up private investigators, because the largest comic book company in the world used to be called Detective Comics.
They still have the "WarHammer 40'000" trademark which is their actually IDENTIFIABLE trademark, and one that they have used extensively and consistently.
In law, as in everything else, you reach as far as you can grab, and you grab everything you can reach. Sure, they have a 40k trademark. That doesn't stop them from trying to get a Space Marine trademark. Ideally (for them) they would totally eliminate any chance of any competitor using any term related to their franchise in a commercial capacity.
I don't think that's the optimal state of existence for anyone, but that's how companies behave. I believe it has something to do with making money.
"our"? "Our artists"?
Up till now you've been referring to GamesWorkshop in the third person. As if you are a separate and independent observer.
I'm sorry if my shifting pronouns confuse you. In that sentence, I was narrating the thought process of whatever person originally chose all the names for all the things in Warhammer.
I did not personally name those things. I should not have to clarify this.
Did you declare in this forum that you are a mouthpiece for GameWorkshop?
Don't play dumb, it was generic even when YOUR COMPANY made the claim.
Even if the term Space Marine was generic prior to the invention of the Internet - which, like I said, could go either way - it was registered successfully and has not been challenged. It is not generic until a court says so and strikes it from the registry.
Unnecessary disclaimer: I do not work for Games Workshop.
Of course they can, here, what you couldn't figure out in quarter of a damn century:
Imperial Space Marines
Just like how the American marines distinguish themselves from other marines by calling themselves US Marines, of the US Marine Corps. And the Space marines of Warhammer 40'000 are distinct from other space marines by how they are Imperial, of the Emperor's Empire.
There is no way your company couldn't have come up with this solution in 25 years unless GW didn't even want to even try.
The term "Imperial Space Marines" is not much more distinctive than the term Space Marines. It's still very descriptive. It just describes space marines that work for an empire. This is why I don't think you understand how trademarks work.
I'll explain. Setting aside the fact that you can't trademark government symbols, the term "United States Marines" would not be capable of being trademarked. Why? Because it just refers to marines from the United States. That's like a car dealership in Michigan trademarking the term "Michigan Cars." That doesn't distinguish his car dealership from any other car dealerships in Michigan. You have to be more specific.
Ideally, you choose as distinctive a name as possible. Like Adeptus Astartes. That's a nice, really distinctive name. It's lucky for GW that they've been using it in promotional materials, marketing and inside the products themselves for about two decades now. Why do you think they would do that? Maybe they anticipate losing control of their Space Marine trademark at some point in the future?
Anyway. That was long, and neither you nor anyone else is going to wade through all that if they're sane. But, you asked. I'm off to bed.