Caught Between the Heartless and the Cowardly, Does an Indie Author Stand a Chance?

Update (Feb. 8, 2013): It appears that Spots the Space Marine is available once again from Amazon’s Kindle store, as of this morning. I don’t have any details about the change, e.g., whether it’s permanent, who relented (Amazon or Games Workshop), or why. (Since this post didn’t go up until last night, we can feel confident that this post had nothing to do with it!)

Further Update (Feb. 14, 2013): It appears Amazon voluntarily put the back up. Apparently, the EFF asked Amazon to, Amazon took an actual look at the notice, gagged, reached the same conclusion outlined below, and put the book back up. The EFF’s report paints Amazon as somehow so overwhelmed with notifications that they can’t spot (as it were) an obvious stinker like this. But taking something down like this isn’t being “neutral.” It’s being a tool (in the old sense of the word). EFF is correct, however, to identify providers like Amazon as the “weak link” in the chain of free speech.

Further Update Cont’d: For its part, Games Workshop claimed that it “had no choice” but to cause the removal of Spots the Space Marinebecause it (1) is commercially available and (2) used a Games Workshop common-law trademark. There are two enormous fallacies here, and we may as well clear them up now. First, a trademark isn’t an exclusive right to use a term commercially; it’s a right not to have your product or service confused with someone else’s, as to origin, sponsorship, affiliation, etc. That was never a reasonable possibility here. Second, and more important, while there is a duty to “police” your marks so that third-party use doesn’t weaken your marks. This duty, however, is often greatly exaggerated by (1) people who need an excuse to justify their abusive behavior and (2) people who stand to profit from aggressive enforcement (gee, like who?). Not every tiny use of your mark is necessarily a dire threat to its survival. Before going nuts, talk to a lawyer who has your best interests at heart and do a costs-benefits analysis as you would (or should) with any lawsuit or legal action. Oh, and the potential for negative publicity counts as a “cost” in that analysis. Yeah, sometimes you really do have to protect your stuff. This wasn’t one of those times.**

* Note: I’m told this link is a pdf screen capture of Games Workshop’s Facebook page, which has since been disabled.

** For the authoritative treatment of this issue, see 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 17:17 (4th ed. 2012). “While many defendants, and some courts, talk about such a failure to sue in terms of ‘abandonment,’ other courts state with vigor that the failure to sue others is totally irrelevant. the truth lies somewhere in between.” Prof. McCarthy’s point: it’s not the failure to police the mark that matters, but the cumulative effect of those unchecked third-party uses that matters. “Of course, if, through failure to prosecute, a mark continually loses ‘strength’ and ‘distinctiveness,’ it will eventually hemorrhage so much that it dies as a mark.”

So there’s this science fiction author, MCA Hogarth, and one of her books is called Spots the Space Marine. Amazon sells her book, both in paperback and in a Kindle edition. Well, it used to sell it in the Kindle edition. In mid-December, Games Workshop—the makers of the popular Warhammer miniatures-and-tabletop-cum-RPG—demanded that Amazon stop distributing the book in electronic format because it infringed on Games Workshop’s trademark in SPACE MARINE.

353894502_fb9d67abe5“Brianna’s Dice” by revcorwin, licensed under Creative Commons Attribution-NonCommercial-ShareAlike

It might help to know a little about Warhammer. It many respects, it’s a throwback. Before there were role-playing games (like Dungeons & Dragons), nerds played war games. You bought some lead miniatures, painted them to look authentic, then re-enacted historical battles—originally Napoleonic—using simple, often home-brewed, rules. People started simulating medieval combat, and from there it was a short step to simulating fantasy combat. The fun was part strategic, part artistic, part academic (for the history buffs). These games gave rise to RPGs, which then eclipsed them in popularity*. What Warhammer did was reinvigorate the game by injecting the role-playing games back into the strategic miniatures game. It was and remains fairly popular.

* And were in turn eclipsed by computer RGPs, which where in turn eclipsed by MMORPGs, like World of Warcraft.

In 1987, Games Workshop created a futuristic version of Warhammer called Warhammer 40,000. One of the combat types you can buy and play are “Space Marines of the Adeptus Astartes,” described so succinctly by Wikipedia as: “giant 7-foot-tall, genetically enhanced super-soldiers with world-destroying firepower and unswerving, fanatical loyalty to the Emperor of Mankind.”

Since about 2009, Games Workshop has been publishing a series of novels under the series title, “Space Marines Battles,” which take place in the Warhammer 40,000 universe and involve, obviously, the Space Marines of  the Adeptus Astartes. They are conspicuously branded under the WARHAMMER 40,000 mark.

Games Workshop has two registrations for the trademark SPACE MARINE. Not for novels, of course.* For “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” and “video computer games; computer software for playing games.”

* Games Workshop had—still has—the opportunity to apply for a third registration for novels, but it didn’t try (or hasn’t tried, so far). Why not? Is it perhaps because it knows that such an application would never succeed?

Space Marines! Space Marines! Space Marines!

Unless you’ve never read any science fiction, you’ll think “space marines” sounds familiar. Indeed, it’s been used in science-fiction novels for decades. Some enterprising Wikipedia contributor has collected all references to “space marines,” and the earliest use appears to be in a 1932 short story called “Captain Brink of the Space Marines,” in Amazing Stories. The best-known use is by Robert A. Heinlein, in several stories and novels, as early as 1939, though he never used it in a title.

If you think about it, “space marine” isn’t a terribly imaginative name. The U.S. Marines are a classic, and premiere, expeditionary force. By reputation, they fight anywhere they are sent, need less logistical support (i.e., more self-reliant and independent), are valorous, tough, loyal, disciplined. They are the closest thing there is to an adventure-military unit (since the end of the Abraham Lincoln Brigade). If there ever is a battle involving hand-to-hand combat in outer space, you can bet that marines will fight it. And we’ll call them “space marines.” Because they’ll be marines. In space.

Is it Bullying? Or Just Aggressive Enforcement?

This state of affairs is fairly intolerable. Games Workshop is asserting a weak trademark claim in order to, essentially, clear out a kinda-sorta competitor from Amazon’s space; and Amazon, apparently with no resistance, or even thought of resistance*, took down Ms. Hogarth’s book. All the while, Ms. Hogarth is losing some income (not much, as she admits—mostly, she’s horrified by the prospect of someone owning a beloved sci-fi term). The result is anticompetitive, which is to say, it hurts the public at large.

* By the way, a real space marine would RESIST! I would have thought Space Amazons would be every bit as tough. But apparently they’re just a bunch of wusses. I’m disappointed that Warhammer 40K doesn’t have Space Amazons, though it does have “Sisters of Battle,” but they don’t look like as much fun.

Something that might surprise you is that you can have trademark rights in the title of your books, even more so if it’s a series. If you titled your novel To Kill a Mockingbird, would you be surprised if the estate of Harper Lee looked at you in askance? If you wrote Harry Potter and Gooey Kablooie, might you perhaps worry about J.K. Rowling’s reaction? The difference is (as I’ll explain below) that you *might* get away with it anyway if you can show that your use of the marks was somehow really important to your artistic expression (even then, I wouldn’t bet on it, unless it’s a very clever parody). Confusion also hurts the public at large—assuming there is any.

Games Workshop is being aggressive here, no doubt. It *might* have common-law trademark rights in SPACE MARINE for novels. By and large, we allow rights holders to push the boundaries of their rights a bit. When the person being pushed against is much, much smaller than the party doing the pushing, we sometimes call it bullying. In this case, it might be a bit much to call it “bullying.”* Games Workshop hasn’t really threatened anyone. It hasn’t threatened to sue Ms. Hogarth. It didn’t even appear to threaten Amazon. All it did was, in essence, ask Amazon to remove Spots the Space Marine from Amazon’s Kindle offerings. Which Amazon did. No questions asked. Games Workshop barely had to work up a sweat.

* Despite what I might have tweeted earlier on the subject.

So Games Workshop is heartless. But Amazon is cowardly. Abjectly so. If you’d like, you can call it “extreme risk aversion” combined with a kind of extreme laziness. But cowardice fits the facts better. Here’s why.

Amazon’s Cowardice

Let’s imagine that this were a clear-cut case of trademark infringement, e.g., Amazon were advertising and selling SONY brand televisions that aren’t actually made by SONY. Clearly, whoever made and sold to Amazon those products is liable for trademark infringement. But so is Amazon. There’s a long line legal authority holding that advertisers—newspapers, television stations, and so forth—are liable for trademark infringement, even though they didn’t make the products being advertised. In fact, even printers who make labels and other advertising material using the infringed mark are liable, even though they had no idea of the infringement and did so at the directly of someone else. That’s because it’s not the product that matters so much as the use of the mark in connection with the product. The idea is that the advertiser or printer shouldn’t profit from the infringement.*

* Smart advertisers and printers get their customers to indemnify them for trademark infringement. Bear in mind that indemnification is only as good as the indemnifier is.

So, it’s not as though Amazon can’t possibly face any liability here. Its liability is coextensive with Ms. Hogarth’s (though the damages are going to be different). Note that Amazon’s potential liability isn’t “secondary” to Ms. Hogarth’s. It’s a completely separate instance of “direct” liability. It’s just that the legal analysis is going to be the same for both Amazon and Ms. Hogarth. If Amazon were worried about trademark liability, then it would be smart to take down Spots the Space Marine.

But wait, didn’t Amazon have to comply with Games Workshop’s notification? No. There are three false premises in that question. First, there is no such thing as a takedown notification for trademark infringement. That’s copyright infringement you’re thinking of. Second, even if this were a case of copyright infringement (which it isn’t), Amazon doesn’t have to comply with the notification, if it thinks the underlying claim is bogus. Under the DMCA safe-harbor provisions, you aren’t automatically liable for infringement simply because you fail to comply with a takedown notice. All it means is that, if you are liable, you have an absolute defense to a claim of infringement if you do comply*. Immunity is pretty nice, so it’s rational to mindlessly comply, but you don’t have to. This leads to the third false premise. If there were trademark infringement, Amazon would already have been liable as soon as it received Games Workshop’s notification (again, in contrast to copyright liability under the DMCA safe harbors).**

* And do—or don’t do—some other things. See here and here for the basics.

** Thus, Cory Doctorow isn’t quite correct when he commented on this story: “Amazon didn’t have to honor the takedown notice. Takedown notices are a copyright thing, a creature of the Digital Millennium Copyright Act. They don’t apply to trademark claims. This is Amazon taking voluntary steps that are in no way required in law.” True, they are a “copyright thing,” and they don’t apply to trademark. But it’s incorrect to say that one is obligated to comply with copyright takedown notices. If one wishes to take the risk, one can ignore the notice. It’s just that most don’t because immunity is so nice. It’s also incorrect to imply that Amazon had no potential liability here at all. In this case, as I’ll argue below, I think its liability is vanishingly small, but that’s not always going to be the case. I think Doctorow’s point is that Amazon was being stupid for treating the “trademark takedown notice” the way most people treat a proper DMCA takedown notice. Which is a bit like treating the Loch Ness Monster like a kitty cat.

Update: There’s a fourth thing I should have mentioned, though it’s not a “false premise” per se. With the DMCA takedown procedure, the provider must tell the uploader about the takedown, and the uploader has the right to send a “counter notification” in which the uploader unmasks himself or herself and makes himself or herself available to be sued for copyright infringement. If the provider receives a proper counter notification can put the allegedly infringing material back up without further consequence, i.e., it remains immune to claims of copyright infringement, even though it’s once again hosting the offending material. There is no equivalent in trademark law. Thus, Ms. Hogarth has no easy recourse with Amazon to get her material reinstated, and Amazon has little incentive to find any scrap of courage and reinstate the book.

But Amazon had no reason to roll over as it did because it had no reason to believe there was any trademark infringement. This is what’s most surprising to me. Amazon must have a team of good IP lawyers on staff.* Had Games Workshop’s notification reached a half-way decent IP lawyer, and the IP lawyer treated it as a cease-and-desist demand, the IP lawyer would have told Amazon that it had no reason to comply. And the IP lawyer would have written back to Games Workshop explaining the many ways its claim is bogus.**

* Then again, Amazon owns Zappos, and as Tara explained not too long ago, Zappos wasn’t exactly a paragon of legal savvy.

** Even if said IP lawyer were really lazy, he or she shouldn’t comply without securing a promise from Games Workshop that it won’t sue Amazon. Unless said IP lawyer didn’t realize that there’s no such thing as a trademark takedown notice—but then, we were assuming the IP lawyer was half-way decent. Otherwise, what’s the point of complying: you’re still liable for your actions up that point, and there’s no guarantee Games Workshop won’t sue you later.

Unmasking Games Workshop’s Claim

There are five reasons why Games Workshop’s claim is weak. Remember, to make a claim for trademark infringement, you need to prove (1) you own a valid mark, and (2) the defendant is using your mark in a way that is likely to cause confusion as to the “source” (Zen-like concept for whatever it is that emanates “quality”) of the defendant’s goods or services.

1. Is this a valid mark? As we’ve discussed, it’s descriptive. It describes a kind of fighting unit (marines) and where they fight (space). Descriptive marks are not automatically invalid, but they’re not automatically valid, either. Games Workshop would have to prove that a significant segment of the consuming public has come to associate SPACE MARINE with its novels series. This is sometimes called acquiring “secondary meaning”: i.e., “space marines” doesn’t just mean marines in space but also a series of novels. Secondary meaning is notoriously difficult to prove.

2. The mark isn’t registered for novels. This doesn’t mean that the mark is invalid, but it makes the task of proving validity much harder. One of the really big advantages of trademark registration is it serves as “prima facie” evidence (i.e., good-enough but not conclusive proof) of validity. Without it, Games Workshop will have prove validity the hard way. Even Apple sometimes can’t do it (coincidentally, against Amazon).

3. Does Games Workshop own the mark? Typically, the person who first uses a mark is the owner of the mark’s rights, at least as to a certain set of goods and services. As we’ve discussed, Games Workshop is hardly the first user of “space marines.” This isn’t quite as powerful an argument as you might think because, while previous authors used the term “space marines,” they appear not to have used it in a way that would make you associate the term exclusively with their work (Heinlein comes closest). By contrast, Games Workshop appears to be marketing the novels as “SPACE MARINE BATTLES,” and at least trying to build up goodwill.

4. Is there likelihood of confusion? When you first laid eyes on Spots the Space Marine, did you think, even for a moment, “Oh, hey, the Warhammer 40K guys,” or “Huh, I wonder if this has anything to do with Warhammer 40K”? The marks are similar in that they both use SPACE MARINE, but there the similarity ends. The fonts are different; the contexts are different (“Spots the SPACE MARINE” vs. “SPACE MARINE Battles”). The goods are the same (sort of—see below). Buyers may not be the most discerning in the world, but they’ll have a sense of the history of the term* and will know not to read too much into it. They’ll probably be able to tell the difference between a space marine named “Spots,” and gritty SPACE MARINE BATTLES.** The mark is descriptive, so it’s weak (assuming proof of secondary meaning), and it hasn’t been used in connection with novels for very long.***

* It’s really here that the previous uses of the term is important.

** Note: proof of actual confusion isn’t necessary, though it can seal the deal.

*** How many of these novels do you think Games Workshop actually sells? I’ve always found novels of this type pretty dreary.

5. Ms. Hogarth’s title is expressive. Here is one of the few times the First Amendment right to free speech really sticks its nose into trademark law. There is general agreement that an artist’s right to expression must be balanced against a trademark owner’s rights. Normally, it’s nearly impossible to find trademark infringement in a literary title, as most courts follow the “Rogers test”: a literary title will not be found infringing* unless its use of the trademark (1) has no artistic relevance to the underlying work whatsoever,” or (2) “explicitly misleads as tot he source of the content of the work.” Rogers v. Grimaldi.

* Technically, Rogers held that it would not violate the Lanham Act, which covers federal trademark infringement, among other things. Rogers actually involved a kind of right of publicity in the name of Ginger Rogers, who was annoyed (fruitlessly, as it turned out) at Fellini’s Ginger and Fred. Anyway, courts apply Rogers to claims of trademark infringement.

In a case, however, where titles are actually competing—which is arguably the case here—it’s not so impossible to find trademark infringement, but it’s still hard. What you do is conduct a likelihood of confusion analysis, but with a thumb on artist’s side of the scale. See Cliffs Notes v. Bantam Doubleday (vacating an injunction against SPY NOTES as a protected parody of CLIFFS NOTES).* The finding of likelihood confusion must be “particularly compelling.”

* Note however that a few courts have misread Rogers to hold that the balancing test NEVER applies in cases of competing titles. It does, just not as strongly.

You’ll notice that none of these issues are a slam dunk for Ms. Hogarth and Amazon, but you should also conclude that they represent four pretty tough mountains for Games Workshop to climb. Now imagine you’re Amazon and you receive this “notification.” And now let’s also assume that you actually know something about the relevant law and that, among other things, this isn’t a DMCA takedown notification (even if it’s denoted as such). And let’s assume you take the notification as a kind of cease-and-decision demand. Do you quake in your boots?

No. Don’t be silly. You’re several times larger than Games Workshop, you have the stronger legal argument. It’s as though you had the larger army and had the higher terrain, and you still turned and ran before the enemy’s herald had even turned to leave.

A Case for Amazonian Action

But doesn’t it make economic sense for Amazon to just take the book down? Fighting with Games Workshop will surely cost more in legal fees than the profits garnered from selling the book. And that might be true, but that’s a short-sighted way to view it. Even putting aside the public-relations hit Amazon must be taking, rolling over without a fight in the face of a weak claim is just an invitation for more such claims. At some point, Amazon will start losing more money than standing and fighting right now costs.

The rub is that Amazon doesn’t want to go to the trouble of actually reading takedown notices. It’s not bothering to distinguish between bogus “trademark” notices and actual DMCA takedown notices. Games Workshop knows this and is taking advantage of it. While Games Workshop may be heartless, it’s not stupid. Thanks to Amazon’s negligence, it can clear out a competitor with almost no effort.*

* Hey, does anyone remember the days when we all got onto Usenet to complain about “T$R” and how it supposedly tried to “trademark” NAZI? A bit of a misunderstanding, of course. But T$R was pretty aggressive about enforcing alleged copyright in things like “hit dice” and “armor class”. Well, at least nobody got raided by the secret service or anything. Anyway, there’s something of a tradition in the RPG industry of absurd IP claims. The Open Gaming License helped alleviate a lot of that (and helped inject new life into the industry), but some people just can’t play nice.

Thanks for reading!