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According to Wikipedia[1], the first use of the term 'space marine' in literature was the 1932 short story Captain Brink of the Space Marines by Bob Olsen. Tha

According to Wikipedia[1], the first use of the term 'space marine' in literature was the 1932 short story Captain Brink of the Space Marines by Bob Olsen. That's a full 43 years before Games Workshop was founded, and 55 years before Warhammer 40K was introduced. And the prior usage of the term and concept kept coming strong throughout the intervening half-century. 1: http://en.wikipedia.org/wiki/Space_marine http://en.wikipedia.org/wiki/Space_marine

dkhenry 14y ago
So why is this not an open and shut case ?
- jthol 14y ago
  Because lawyers.
- drakeandrews 14y ago
  Because Games Workshop employs the kind of lawyers that consider petty things like the truth and other peoples IP to be inconveniences to be worked around.
- njharman 14y ago
  Because lack of "prior art" is not a requirement for trademark, nor is uniqueness. "Coke" has other meanings http://en.wikipedia.org/wiki/Coke_(fuel) http://en.wikipedia.org/wiki/Coke_(fuel) and yet is still trademarked.
  - bunderbunder 14y ago
    That said, isn't it the case that one can't just take something that exists in common usage and trademark it as-is? For example, the basic structure of the fairy tale about Aladdin and the magic lamp had been around for a long time, and was clearly not originated by Disney. Consequently, Disney has no right to claim trademark or copyright control over the name Aladdin or or anything generally related to the story. They only get rights over their own work - additions they made to the story, characters' appearances, etc. Similarly, Games Workshop shouldn't be able to own the phrase 'space marines'. At most, all they should get to control is the use of the name Space Marines to describe the surgically-enhanced cybernetic super-soldiers that are peculiar to their franchise.
    - ajross 14y ago
      Was "space marine" in common usage in 1987, though? The fact that it exists in a long out-of-print pulp novel doesn't mean that everyone understood its meaning. Again, this isn't a patent. All that's required is that, when the trademark was registered, GW's usage of the term was unique and relevant to their business.
      - codingkevin 14y ago
        Alien came out in 1979. Aliens in 1986. I would say it was in common usage.
        stcredzero 14y ago
        We're they "space marines" or "colonial marines?"
        codingkevin 14y ago
        I believe you're correct on the official name. I would make a case that most people thought of them as Space Marines though.
        cygx 14y ago
        Apparently the term 'space marine' was never used in the movies, but the alien-themed toys by Kenner from 1992 do use it.
        regularfry 14y ago
        Would the fact that GW didn't enforce against that use be enough to invalidate their original 1987 claim?
        stcredzero 14y ago
        Maybe if we also dug up a whole library of other fiction and toys/games using the term as well.
  - vacri 14y ago
    "Coke" has other meanings in a different industry. "Space Marine" has prior art in the same industry.
  - fnordfnordfnord 14y ago
    But can the Coca Cola Company enforce its "Coke" trade mark against purveyors of fossil fuel derived coke products? It's silly to think that Coca Cola would try; and nothing at all like GW trying to bogart parts of the common sci-fi vernacular.
- ominous_prime 14y ago
  It may be, but an open and shut case still costs 10's of thousands of dollars, and that's if it doesn't go to court.
  - bunderbunder 14y ago
    This is where common law systems really bother me. When the legal system is set up in such a manner that defending oneself in civil court is more-or-less impossible for people who aren't wealthy enough to pay hundreds of dollars per hour for legal representation, the phrase "equal protection under the law" begins to sound like nothing more than a cruel joke.
- Semaphor 14y ago
  I guess someone needs to have the money to go to court over it.
- csense 14y ago
  Because there's a nonzero risk the judge won't order Warhammer to pay the defendant's legal fees. Meaning that even if the author of the book "wins" in court, he might still lose a lot of money. And if he doesn't have a corp or LLC set up to sell the book, or hasn't jumped through all the bureaucratic hoops involved correctly, there's a nonzero risk that the Warhammer people could get a multi-million dollar judgment on him and take his house, cars, kid's college fund and most of his future salary. (The fact that he says he's using the proceeds from the book to pay for his daughter's schooling actually implies he doesn't have one of these legal structures set up.) That's how the US legal system works, unfortunately. Disclaimer: I am not a lawyer and this is not legal advice.
anigbrowl 14y ago
That would be relevant in a patent case, but not to trademarks, which do not depend on prior use but on when a trade mark first enters the stream of commerce. I've said it before in other contexts: GW is not really being a villain here, they're just making a show of defending their trademark. If they don't, someone else could start using the mark and then say 'well you didn't defend it when those people were (arguably) infringing on it, so I assumed you had abandoned the mark,' and get away with it. If you're a trademark owner, you have to go through the motions of defending your mark against all possible infringers - a use-it-or-lose-it situation, as it were.
- DennisP 14y ago
  Doesn't a book count as part of the stream of commerce? Or maybe we should just look at games. Wiki says there was a game actually named "Space Marines" which entered the market in 1977, a decade before Warhammer 40K. http://en.wikipedia.org/wiki/Space_marine#Games http://en.wikipedia.org/wiki/Space_marine#Games
  - macchina 14y ago
    It has to be used in the stream of commerce as a trademark. Being used as a trademark means that the term is used to identify the source of the goods. When GW registered "space marine," prior users of the mark still retained the right to use it within their own specific geographic area.
- macchina 14y ago
  Yes, but "Space Marine" is an extremely weak mark, and evidently it is only registered in one class of goods and services (in the US): "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." [1] I don't think the claim is baseless, but I don't see how this is a must litigate scenario. I'm pretty sure they could offer a reasonable settlement and remain protected. 1.http://mcahogarth.org/?p=5075 http://mcahogarth.org/?p=5075
  - 14y ago

dkhenry 14y ago

So why is this not an open and shut case ?

jthol 14y ago
Because lawyers.
drakeandrews 14y ago
Because Games Workshop employs the kind of lawyers that consider petty things like the truth and other peoples IP to be inconveniences to be worked around.
njharman 14y ago
Because lack of "prior art" is not a requirement for trademark, nor is uniqueness. "Coke" has other meanings http://en.wikipedia.org/wiki/Coke_(fuel) http://en.wikipedia.org/wiki/Coke_(fuel) and yet is still trademarked.
- bunderbunder 14y ago
  That said, isn't it the case that one can't just take something that exists in common usage and trademark it as-is? For example, the basic structure of the fairy tale about Aladdin and the magic lamp had been around for a long time, and was clearly not originated by Disney. Consequently, Disney has no right to claim trademark or copyright control over the name Aladdin or or anything generally related to the story. They only get rights over their own work - additions they made to the story, characters' appearances, etc. Similarly, Games Workshop shouldn't be able to own the phrase 'space marines'. At most, all they should get to control is the use of the name Space Marines to describe the surgically-enhanced cybernetic super-soldiers that are peculiar to their franchise.
  - ajross 14y ago
    Was "space marine" in common usage in 1987, though? The fact that it exists in a long out-of-print pulp novel doesn't mean that everyone understood its meaning. Again, this isn't a patent. All that's required is that, when the trademark was registered, GW's usage of the term was unique and relevant to their business.
    - codingkevin 14y ago
      Alien came out in 1979. Aliens in 1986. I would say it was in common usage.
      - stcredzero 14y ago
        We're they "space marines" or "colonial marines?"
        codingkevin 14y ago
        I believe you're correct on the official name. I would make a case that most people thought of them as Space Marines though.
        cygx 14y ago
        Apparently the term 'space marine' was never used in the movies, but the alien-themed toys by Kenner from 1992 do use it.
        regularfry 14y ago
        Would the fact that GW didn't enforce against that use be enough to invalidate their original 1987 claim?
        stcredzero 14y ago
        Maybe if we also dug up a whole library of other fiction and toys/games using the term as well.
- vacri 14y ago
  "Coke" has other meanings in a different industry. "Space Marine" has prior art in the same industry.
- fnordfnordfnord 14y ago
  But can the Coca Cola Company enforce its "Coke" trade mark against purveyors of fossil fuel derived coke products? It's silly to think that Coca Cola would try; and nothing at all like GW trying to bogart parts of the common sci-fi vernacular.
ominous_prime 14y ago
It may be, but an open and shut case still costs 10's of thousands of dollars, and that's if it doesn't go to court.
- bunderbunder 14y ago
  This is where common law systems really bother me. When the legal system is set up in such a manner that defending oneself in civil court is more-or-less impossible for people who aren't wealthy enough to pay hundreds of dollars per hour for legal representation, the phrase "equal protection under the law" begins to sound like nothing more than a cruel joke.
Semaphor 14y ago
I guess someone needs to have the money to go to court over it.
csense 14y ago
Because there's a nonzero risk the judge won't order Warhammer to pay the defendant's legal fees. Meaning that even if the author of the book "wins" in court, he might still lose a lot of money. And if he doesn't have a corp or LLC set up to sell the book, or hasn't jumped through all the bureaucratic hoops involved correctly, there's a nonzero risk that the Warhammer people could get a multi-million dollar judgment on him and take his house, cars, kid's college fund and most of his future salary. (The fact that he says he's using the proceeds from the book to pay for his daughter's schooling actually implies he doesn't have one of these legal structures set up.) That's how the US legal system works, unfortunately. Disclaimer: I am not a lawyer and this is not legal advice.

anigbrowl 14y ago

That would be relevant in a patent case, but not to trademarks, which do not depend on prior use but on when a trade mark first enters the stream of commerce. I've said it before in other contexts: GW is not really being a villain here, they're just making a show of defending their trademark. If they don't, someone else could start using the mark and then say 'well you didn't defend it when those people were (arguably) infringing on it, so I assumed you had abandoned the mark,' and get away with it. If you're a trademark owner, you have to go through the motions of defending your mark against all possible infringers - a use-it-or-lose-it situation, as it were.

DennisP 14y ago
Doesn't a book count as part of the stream of commerce? Or maybe we should just look at games. Wiki says there was a game actually named "Space Marines" which entered the market in 1977, a decade before Warhammer 40K. http://en.wikipedia.org/wiki/Space_marine#Games http://en.wikipedia.org/wiki/Space_marine#Games
- macchina 14y ago
  It has to be used in the stream of commerce as a trademark. Being used as a trademark means that the term is used to identify the source of the goods. When GW registered "space marine," prior users of the mark still retained the right to use it within their own specific geographic area.
macchina 14y ago
Yes, but "Space Marine" is an extremely weak mark, and evidently it is only registered in one class of goods and services (in the US): "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." [1] I don't think the claim is baseless, but I don't see how this is a must litigate scenario. I'm pretty sure they could offer a reasonable settlement and remain protected. 1.http://mcahogarth.org/?p=5075 http://mcahogarth.org/?p=5075
- 14y ago