Some People Call Me The Space Marine . . . And Get Threatened By Games Workshop

M.C.A. Hogarth is a writer of many things, including science fiction.

You would think that it is difficult to draw frivolous legal threats and demands writing science fiction. You would be wrong. Hogarth wrote a book called Spots the Space Marine, only to find it yanked from Amazon, apparently based on a claim of trademark infringement by I-can't-believe-they-still-exist gaming institution Games Workshop. Games Workshop, it seems, told Amazon that they own the trademark to "Space Marine," not withstanding that (1) they don't own a trademark to it in the context of science fiction books, and (2) they couldn't, because the term has been in wide use in science fiction for the better part of a century.

Unprincipled and frivolous trademark threats chill speech just like defamation threats. Companies that make them should face consequences. Regrettably, Amazon will probably continue to pull books first and ask questions later.

Last 5 posts by Ken White


  1. says

    Maybe next they'll go after Heinlein for Starship Troopers, which was written decades before GDW was founded.

    Wouldn't be THAT amazing – Wired magazine founded a book division called Hard Wired and then went after Walter Jon Williams for having the temerity to publish a science fiction novel by the same title a decade earlier.

    Some corporations be stupid, yo, Mr White?

  2. b says

    One can only hope that Hogarth is rewarded for his inconvenience with some extra sales.

    To hope for an apology would be too much. Argh.

  3. Caudex says

    @John Ammon
    Don't be put off. WH40K is bloody amazing. And GW won't improve anytime soon. They've been making terrible business decisions since their Rogue Trader days. It's all the fault of the higher-ups. The local guys hate them, the neckbeards hate them, /tg/ hates them… And yet they still blunder on.

  4. lee says

    I don't think that your analysis on part (1) is exactly right. Even if their trademark is limited to a certain class of goods, I think they could still proceed on an infringement claim as long as they can show a likelihood of confusion. The gap between video games and science fiction is not so large that it is unreasonable to find some likelihood of confusion.

    The claim is still a failure, for the reasons you mentioned though.

  5. Anglave says

    I wonder how GW feels about Blizzard's StarCraft games and associated universe? "Space Marine", to me, immediately summons an image of a Terran Marine in big-shouldered powered armor, and the words "You want a piece of me, boy?" or "Who wants some?"

  6. says

    It might be worth noting that Amazon once sued a brick-and-mortar bookstore called "Amazon" (It was some kind of feminist/leftist place, IIRC), despite the latter being in existence well before the former.

    There's got to be harsher penalties for lawyers who file invalid lawsuits, penalties that will cost more than the research needed to determine if they are invalid. On the Amazon side, there's not much the law can do — they have a right to not sell any book for any reason. Legally, they could say, "GW earns us 100 times more money than this author does. They asked us to remove this book. We did so, because we like them more. Sucks to be you." So, to my mind, the onus has to be on those making legal threats.

    Could filing a baseless trademark lawsuit to remove books from sale be considered, legally, in the same vein as hijacking a competitor's trucks and destroying their contents?

  7. says

    Has anyone actually read their 'claimed' list of trademarks they hold?

    There are some doozies in there that are so ubiquitous and generic that they would never succeed anywhere (well other than the US trade mark office it seems). ie: Codex, Citadel, Dark Angels, , Fanatic, Inferno, Keeper of Secrets, Marauder (WTF!!!!), Tau (yes the same 19th letter in the Greek alphabet), White Dwarf (at least it's not Red.. otherwise there would be smeg to pay)

    Oh and I can't go past "Inquisitor" Nobody ever would think that was suspect *eyeroll*

  8. David says

    This complaint violates my patent on trademarking things that can't legally be trademarked. Expect a visit from my lawyer*.

    *Robot death squad

  9. Art says

    Games Workshop is notoriously sue-happy. I'm pretty sure they've threatened fans with legal action over getting Space Marine chapter tattoos and such.

    Of course, they kind of deserved it, for getting Space Marine chapter tattoos. But that's neither here nor there.

    The Starcraft/Warhammer 40k thing is more interesting when you realize that Blizzard was originally making Starcraft a 40k game (Terrans are Space Marines, Zerg are Tyranids, and Protoss are the Eldar). Asking about the deal or what made it fall through used to be a bannable offense on either corporation's forum, though I don't know if that's still the case.

  10. says

    > Of course, they kind of deserved it, for getting Space Marine chapter tattoos. But that's neither here nor there.



  11. Zack says

    @Art I'm 99% sure blizzard is over it. Ironically Starcraft is now a bigger property, and frankly a bigger deal to games and gaming history, than the actual 40k series of games put out by Games Workshop. Starcraft actually got a hell of a lot better for ditching the 40k trappings; the story of a bunch of humans who are literally the scum of the human race happening to get marooned lightyears from home and have to defend themselves from hive-mind biological demons and fascist space psychic reptiles? It's like the founding of Australia meets Robinson Crusoe meets Doom.

  12. says

    @Zack As an Australian I would like to formally state that I welcome our space reptile overlords who will kick the living crap out of your hive-mind biological politicians…oops demons ;)

  13. says

    My mind jumped to the wrong version of the word "draw" at first and it took me about five readings to parse that second sentence. I thought you were saying only the mind of a fiction writer could possibly come up such a frivolous legal threat.

  14. says

    I'm going to have to be the devil's advocate on this one. I have read in a few different sources that GW aggressively protects their intellectual property because of laws in certain European countries. In such places, allowing someone to use the IP gives them legal rights to ownership, which puts a different lens up through which to view their actions. They're not necessarily trying to win each case, so much as to prove that they have a track record of not allowing use of their IP.
    I believe the initial uproar on this was a fan film being made in Germany that they slammed the door on. As I recall, even though no money would be made, some twist of German law at the time would give them partial ownership of the IP they depicted. That being said, they could chill out in places that aren't so moronic, but I'm pretty sure they just act as if every perceived threat is apocalyptic.

  15. Jerryskids says

    Wow. Claiming trademark or copyright for such generic terms sounds as ridiculous as the holder of the rights for 'Star Wars' claiming nobody else can use the word 'Empire'.

    Oh, wait. Nevermind. Let me get back to you on that in a year or so.

  16. Dan Weber says

    I'm a _little_ on GW's side, because it's kind of silly that I could create a bunch of, say, Angry Birds video games and toys, but forget to register the trademark on books, so someone else starts making Angry Birds coloring books.

    It still feels too generic to widely trade mark, as well as overreach. Was this their first contact with the author?

  17. Wil says

    Both Warcraft and Starcraft owe big debts to GW – but the one thing we don't know is if Blizzard came to some kind of agreement with GW given the similarities in the properties. That might explain why GW is still around.

  18. Jack says

    @G Thompson
    They claim to have a trademark on "Citadel." I guess they should be suing the US Government for their trademark infringing military school "The Citadel" – they are even misrepresenting GW by having their own logo! There has got to be some serious damages there…

  19. says

    The lack of understanding of trademark law in this thread is making my feet sad.

    Ken! Ken! Please explain things to people.

  20. says

    You may be right; it was a long time ago, and I may be misremembering. There were a couple of "Web commerce site finds small business using 'their' name, throws hissy fit" stories in the late 90s, and similarly "Small business smells deep pockets, sues web commerce site", all with varying degrees of justification/viability.

  21. Dan Weber says

    but the one thing we don't know is if Blizzard came to some kind of agreement with GW given the similarities in the properties

    It's practically assured that if Blizzard licensed terms from GW that Blizzard would say so somewhere. Probably not right on the cover but easily found if you look around their packaging or about: box or whatever web apps have. You'd see something like "Frobozz is a trademark of GW, used with permission."

    This is likely similar to what GW would have gotten out of the author had they contacted her directly. They could have given her a free license as long as she says they own it, which is a deal she would probably accept, and said not to use it in the title on future works.

  22. Squirrel says

    While GW has no great track record on this stuff, it's worth noting since I haven't seen it anywhere else on this page that GW (through it's subsidiary The Black Library) actually publishes dozens of science fiction novels set in both the 40k and warhammer universes… so there might be some legitimacy if this author is playing too close to GW's IP. I'm not saying legally defendable or worth sueing over, but I think this does fall into the realm of "could be reasonably confused for GW's product"

  23. says

    There are many game-industry trademark-related urban legends.

    My favorite is the one that arose from some stupidity from Lucasfilm, which led to a legend that TSR attempted to trademark the term "Nazi."

  24. says

    @Connie and others beat me to it: For the sake of consistency they're going to have to sue Blizzard, and best of luck with that.

    Blizzard, on the other hand, has shown admirable restraint in not trying to collect royalties on the verb form of 'zerg', which has made it into the lexicon of people who don't even know what Starcraft *is*.

  25. says

    The little Nazi paper figures from the Indiana Jones game (which was really poorly done, overall; the later one from WEG was much better), did have a "TM" mark, allegedly for the combination of the image and the label, though, to my mind, wouldn't that be covered by copyright? (

    It is true that during the final days of TSR, when this "Internet" thing started to get popular, that TSR officially stated any fan made content, even that which didn't use any art, text, etc, from the game, was illegal unless uploaded to their site, and rights were granted to them only to distribute it. ( As you might guess, this did NOT go over well, and, I think, less than a dozen or so pieces were ever loaded to the "official" site (compare to Blue Troll's netbook repository, if there's a live mirror of it anywhere… I scooped it up to my local machine a few years ago…seems to be dead now…)

  26. Scott Jacobs says

    I'm shocked that GW hasn't tried that, Ken, simply so they could then sue anyone who called them "trademark-nazi's"…

  27. wgering says

    Come on now, this is Games Workshop we're talking about. The same company that will sell you a shoddily-sculpted single infantry fig for $13 when you could get a beautiful fig from any of Reaper's lines for about $5-6 (or less, if the Bones lines works out).

    Are we really surprised that they're making bad business decisions?

  28. says

    Eh, sorry sometimes your posts leave me a bit bemused: to be a free speech fundie is all well and good (and generally I'm with you; fine detail around violence and threats to violence notwithstanding) but occasionally it appears that you expect everyone else to be, in their private behaviour, as principledly uncowed by legalism and threats and you are. Fine, GW are being pricks; but Amazon's behaviour — if they received a legal threat — seems perfectly reasonable to me. Their first responsibility is to their shareholders and if there is the slightest possibility of an action being taken over a particular item it seems wholly reasonable to suspend sale of that item until the situation has been resolved. That they didn't leap immediately into Defence of the Little Guy mode is because, well, they're a big, soulless company and big, soulless companies tend not to get so wound up about these things. GW are being malicious bullies; but I really can't get wound up that Amazon — who must received a huge amount of legal threats and — play it safe until the whiff of legal action is over.

  29. Xenocles says

    @Stuart Brown-

    It's true they might just be hedging their bets in a monstrously unfair system, but at the same time you have to stop these actions early. I'm torn whether to cite Kipling's Danegeld or Picard's rant in First Contact.

  30. says

    Minor nerd nitpick correction to TJIC: GDW is Game Designers' Workshop, and not at all the same as Games Workshop, the offender in this case. Also they sadly went Tango Uniform in 1996. In any event, they created some excellent games – and no such bludgeonly reputation as GW.

    On the other side, thanks for the knowledge about Wired's idiotic attack on my friend Walter Jon Williams over Hardwired. I did not know about that particular idiocy.

  31. says

    Shoot, Amazon delisted all of my books when I "failed" to prove I'd never sold the rights to two of them to anyone else. They wouldn't tell me what sort of "documentation" I needed to prove a negative to their peculiar satisfaction. Note: They didn't say that someone else claimed the rights to the two books. Nor would they explain why an alleged issue with two books required delisting all my books.

    I took it as a final sign and quit writing. I just give the books away for free at my web site now. And I don't do business with Amazon anymore.

  32. aczarnowski says

    This kind of bass-ackwards trademark and IP stuff does not surprise me in the least from Games Workshop. I moved away from everything they touched a while back and am much happier for it.

  33. Myk says

    "Amazon will probably continue to pull books first and ask questions later."… unless, of course, the book happens to be a how-to guide to pedophilia, in which case they'll sell it until *forced* to stop, despite hundreds of complaints in the interim.

  34. LTMG says

    @Taurou. Copying GW figures may well soon go underground. It is a small matter to laser scan a figure to obtain a 3D data set. Then download that, through a data format filter if needed, to a 3D stereolithography printer. Make all the copies one would want. Resolution might not be quite as good as the original styrene figure, but it can be very close.

  35. Tim O. says

    Lizzard, I can one better on TSR's bs…back in highschool (90's) a buddy and me sent a letter to TSR asking about what it would take to write a book in one of the TSR universes, their response was that when we finished the story we needed to send it to them for approval, the moment they received it all ownership became theirs forevermore and they reserved the right to take any part of our story, or characters, rewrite some or all, assign a staff writer to both rewrite the story and potentially any further books based on our story. furthermore we were legally barred from ever using the setting, the plot, or characters (including their names) in any other works by any other publisher. all of this, they said, could be done without any compensation to us whatsoever.

    personally I think GW's legal attacks on their fans are kinda douchey, and ultimately hurts their brand (they state on their faq that you cannot get GW based tattoos because then the tattoo artist would be making a profit off of THEIR product), but they're still better than Anne McCaffrey who was known to sue or at least have an angry lawyer threaten to sue anyone who dared write fan fiction, draw any dragon like creature with faceted eyes, or in any way created anything, even with no possible intent to profit from, that could be considered to be influenced from Pern. there were any number of fantasy art sites that stated quite clearly that absolutely no Pern fanwork will be allowed because they were tired of hearing from her lawyer. at least with GW, if you're not actually making a dime off it, they'll largely leave you alone

  36. Matthew Cline says

    In such places, allowing someone to use the IP gives them legal rights to ownership, which puts a different lens up through which to view their actions. They're not necessarily trying to win each case, so much as to prove that they have a track record of not allowing use of their IP.

    Even in countries that don't have laws like that, doesn't having a hair trigger reaction to trademark non-infringements help when it comes preventing a trademark from becoming genericized? If anyone claims that it's become generic, you can then point to how rabid you were in defense of your trademark.

  37. James Pollock says

    Tim, try seeing the other side of the story.
    TSR, like other "shared universe" publishers, sees a LOT of would-be authors inquire about becoming published using materials based on existing works. They also see a lot of claims along the lines of "you stole my idea!" from people who sent in unsolicited manuscripts, synopses, outlines, etc. Since copyright infringement doesn't have to be intentional to be actionable, claims such as these can be a nuisance even if they're meritless. So the rules are written to flatly preclude the existence of any such claims (If you don't send it in you have to case that they copied your work, and if you do send it in you've given them permission to copy your work.)
    They did pull in a few new writers from the "slush pile" (R.A. Salvatore's first books were nearly unreadable, and reeked of Tolkien. He got better.)
    This same logic is why most "shared universe" literary projects are invitation-only, and unsolicited manuscripts are returned unread.

  38. says

    @Victor Milán:

    > Minor nerd nitpick correction to TJIC: GDW is Game Designers' Workshop

    Doah! Knew that (at a conscious level), but my fingers had an unconscious enthusiasm for typing old patterns.

    Thx for the correction.

  39. says

    @Tim O. :

    > Lizzard, I can one better on TSR's bs

    And I can one-better that.

    Back around 1984 I devised a system for revised AD&D combat tables (this was pre-THAC0). I wrote it up, mailed it into Dragon, and it sold (my first magazine sale!).

    I got the contract, read it over, and signed away First Periodical Rights for $200 or so.

    20 years later TSR had been sold to Wizards of the Coast had been sold to Hasbro and Hasbro decided to monetize all "their" content by putting out a CD-ROM of the articles from the first 250 issues of Dragon.

    The problem was that they didn't get permission. They had First Serial Rights only, not reprint rights.

    I heard of their plans, sent them a letter, sent them another, letter, and finally, after the CD-ROM came out sued them in small claims court…where they failed to send anyone to defend.

    And that's how an article I wrote when I was 13 earned me $2,000 when I was in my 30s.

  40. says

    I had a similar problem several years ago when Polymancer, a company in Canada, threatened to sue me for trademark infringement because I had used the term in my novels and had it used on my website. I smacked them hard. There is a supreme court ruling that the majority opinion was given by Sandra Day O'Connor to whit: you can't trademark a word out of the language.

  41. Angstela says

    I don't know who the hell makes these sorts of decisions over at GW, but my advice to them: get an outsider to do all your public contact and occasionally say, "You know guys, that's fucking stupid, so we're not sending it out."

    I've been disgusted by them since the 90's when I wrote a (admittedly pathetic) letter to them explaining I was a girl, and I played their games, and wouldn't it be really awesome if there were at least one playable female character in their Warhammer Quest game? Their condescending reply made sure they never have gotten another penny from me.

  42. says

    Blizzard at one point way, way back in the day, said that they had been working on a game to pitch to Games Workshop – an RTS set in the Warhammer Fantasy universe – and that this product evolved into Warcraft. Of course that got buried really frigging fast when the later games started coming out. What is hysterical about this is that if you look at the page for Spot the Space Marine is that it hedges closer to Starship Troopers than anything Warhammer related and you don't see Heinlein's family going after Games Workshop. I love their works but that company is full of idiots.

  43. says

    My Cafepress store got a cease and desist letter about a button and a sticker that said "orc" because they claim that spelling is trademarked. As I was making a whole 50 cents off of those sales I just took them down. Never got around to remaking the design with a different spelling.

  44. SiliconStyle says

    Just a 'woot' moment…I honestly wasn't expecting a response to the email, or a blog to be written for it.

  45. Matthew Cline says

    My Cafepress store got a cease and desist letter about a button and a sticker that said "orc" because they claim that spelling is trademarked.

    What, no image of a 40k orc, just the word "orc"? Have they tried suing the D&D publishers for including orcs in their Monster Manuals?

  46. Sadrice says

    My Cafepress store got a cease and desist letter about a button and a sticker that said "orc" because they claim that spelling is trademarked.

    Do you possibly mean "ork" (the warhammer 40k spelling) rather than "orc" (the Tolkien spelling)?

    I don't know anything about trademark law, but is it possible that when they trademark "Citadel", "Inquisitor", or "Tau", you have to be using it in a similar context in order to infringe, rather than, say, describing a fortress as a citadel, or talking about the Inquisition, or talking about alzheimers research?

  47. James Pollock says

    Perhaps re-phrase your polite inquiry as a request for permission to use all their trademarks, and indicate that they can accept your request by politely declining to answer. It has no legal effect, of course, but is at least slightly more likely to get someone's attention…

  48. James Pollock says

    Portland, OR has a gaming convention… somewhat more subdued than a Gencon, I imagine, never having gone to either.

  49. Ted N says

    Wasn't there a certain rifle accessory company that tried to claim they had rights to the number 13; something about their tech specs?

    Lizard: Wow, how to people like that manage to leave the house?

  50. Sam says

    Apparently, the author is still having trouble with this:

    And I heartily apologize if that link is in the wrong format.