The Internet recently has been full of stories about trade mark action being taken the Games Workshop, a British company well-known for creating the “Warhammer” and “Warhammer 40k” series of table-top and computer games. Specifically, it has been seeking to protect its claimed trade mark rights in the name “Space Marine”, an iconic character in the Warhammer 40K universe, against the author of a Kindle ebook called “Spot the Space Marine”. The Internet, in the main part, was scathing.The EFF, for example, called Games Workshop a “trademark bully”.
Some thoughts from Jas:
This was all a bit of a shame, where ill-informed Internet pundit made Games Workshop’s action to be far more threatening and inappropriate than they actually were.
In my view, Games Workshop were justified in what they were trying to do. They own the Space Marine brand as well as as common law rights in the Space Marine name. They risked weakening or losing those rights if they did not seek to protect them when third parties created products which are confusingly similar to the Space Marine products (and it’s at least arguable that a book called “Spot the Space Marine” could, at first sight, be confusing with the “Space Marine” brand). It’s important to bear in mind that, for most consumers, the name “Space Marine” is so associated with Games Workshop that there’s a decent argument that any reference to Space Marine would be assumed by an average consumer to have something to do with the Warhammer 40K series.
Now, some sought to criticise Games Workshop on the basis that they are claiming monopoly rights over a phrase, thus rendering everyone else unable to use these apparently plain English words ‘Space Marine’ forever. Not necessarily so. As my guide to trade marks and games discussed, the test is whether a new product is “confusingly similar” to the trademarked product. If the public would not confuse the two products, it greatly weakens the trademark owner’s ability to take action. And that’s just the start of the different tests and tactics that could be deployed when one product wants to use a name similar to another, trademarked, product. Another big issue, for example, is whether you seek to make commercial use of the thing – if it’s just for personal use or made available for free, it can make it harder for the trademark owner to argue with. That’s not to deny that where a name is highly associated with a particular product, it can get close to a de facto monopoly, but the point is it isn’t as simple as “trade mark = monopoly”.
Obviously there’s an argument here that maybe Games Workshop was picking on a small guy whose product was only debatably linked to Space Marine the GW scifi series.But look at it from GW’s perspective: if they let this go, and a bigger guy made a product called Space Marine which is a lot closer to GW’s series, it would be harder for GW to defend itself if it hadn’t at least written to the owner of Spot the Space Marine (because otherwise the bigger guy could say in court ‘you let him get away with it, why not me too’?)
Others argued that Games Workshop shouldn’t be able to trademark a purely descriptive phrase like “Space Marine”. Actually it IS a well-established principle of trade mark law that a purely descriptive name is not normally trademarkable…unless that name has become distinctive through its use. Games Workshop can argue that “Space Marine” has become distinctive to it through its many years of continuous and pretty much exclusive use of the phrase in science fiction products over the years. In the same way that Apple, Inc could trade marks “Apple” in relation to tech products or Amazon could trade mark its name in relation to e-commerce and lots of other activities.
The last argument I’ve seen seems the most simple – “why should Games Workshop be the only one who can make Space Marine books or comics or games or films in the future?” I can see the force of that argument superficially but, unfortunately, that’s just not how trade mark law works. If you make a product, make it successful, make it distinctive to your business, then the law gives you rights to control how it’s used and to what extent other people can use its name. To argue against that is to argue against trademark law altogether and involves opposing every and any creative business being able to control the name of the thing they create, from musicians creating a successful album to a games publisher making the next AAA hit game. It’s not a small matter, in other words, and just arguing ‘I want to be free to make something called the same as something else’ doesn’t cut it.
Last point: as my mum would say, “there’s ways and then there’s ways” to deal with IP infringement issues, particularly where passionate fans are involved. Why alienate someone with a legal threat when you can instead send them a polite but firm letter explaining why you need them to change their product name and why it’s important, or maybe even offer them a licence agreement? (I’m not saying Games Workshop did that mind you – no one has seen the legal letters after all). Or, as one of my Twitter followers put it in a conversation about trade marks a while ago, “just because you have to protect your legal rights, doesn’t mean you have to be an idiot about it”.
Games Workshop was justified in taking action against the ebook author. Maybe they could have done it in a more sensitive manner (we’ll never know, since the story was turned against them almost instantly).