In mid-December, Games Workshop made a complaint to Amazon that I had infringed on their trademark of the words “space marine” with my novel Spots the Space Marine (a near-future military science fiction novel about real marines). Their US trademark covers only gaming materials, not novels; the word “space marine” has been in use in science fiction since it was coined in the 1930s, by authors like Heinlein and E.E. Smith, among others. However, based on that complaint, Amazon blocked sales of my e-book.
After some delay due to the holidays, I’ve had a phone conversation with Games Workshop about their issues with my novel. My takeaway from that conversation, then:
Games Workshop has trademarks in the US, UK and Europe. The US and UK trademarks cover only games and miniatures, as I mentioned previously. The European trademark, however, includes Class 16, which reads:
Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks
Games Workshop brought their complaint to Amazon Kindle Publishing UK based on this class in the European trademark, which caused Amazon Kindle Publishing (in the US) to block my e-book in all the countries it was being sold. The paperback was not affected at the time of the complaint and has never been blocked from sale.
Salient points (even granting that the many prior usages of “space marine” in science fiction can be ignored):
1. Trademark rights are limited to the territory of the government that grants them. A European trademark cannot be enforced in the US. GW can make claims in the US based on their US trademark, but their US trademark does not include Class 16, the class upon which they told me they were making their claim.
2. My e-book is not “printed matter.” There is a trademark class recommended for covering e-books and other forms of entertainment like radio and television. Games Workshop’s trademarks in the US, UK and Europe do not include this class.
3. The paperback version of Spots isn’t being sold in Europe; I would have to toggle a specific distribution channel to approve Createspace’s distribution to Europe and that toggle is currently off.
At this point, the e-book remains blocked from sale in all countries. Spots was my homage to Heinlein and the greats of science fiction. I contributed some of the profit to charities benefiting wounded soldiers (notably the Wounded Warrior Project). The e-book edition of Spots is where most of the money comes from, and where most of my readers first encounter the story. I don’t appreciate having to defend my use of “space marine” to describe a cookie-baking mom no one could mistake for something out of Warhammer 40K.
I’ve had some positive discussions with lawyers on my next steps, and am now researching lawyers with specialties in international trademark law. If you know of any such people (or are one), I’d like to hear from you! Several of you have asked if you can contribute to a Spots legal defense fund; I hope not to need one, but I’ll keep you updated.
Mirrored from MCAH Online.