This might be old news, but I just heard about it this week (so it’s new news to me). The story itself—or at least this round of it—is over, but it illustrates the state of things in the online world. Here’s what happened:
Games Workshop, the makers of Warhammer 40K and other table top games, brought a trademark infringement complaint against author M. C. A. Hogarth for her novel Spots the Space Marine, which was available through Amazon and other online retailers. Amazon immediately removed the book from sale with no recourse to the author (they told her to take the matter up with Games Workshop). It seems Games Workshop holds a trademark in Europe and the United States on the term “space marine,” and even though the trademark in the U.S. does not cover books, they felt it was within their power to remove Ms. Hogarth’s book (the Electronic Frontier Foundation calls companies that do this “Trademark Bullies”).
On her blog, Ms. Hogarth talked about her feeling of helplessness when dealing with both Amazon and Games Workshop (read here, here, and here). Both of these large businesses gave her little if any recourse to the takedown notice. Fortunately, all has turned out well for Ms. Hogarth. The Electronic Frontiers Foundation got involved and help to settle the issue (for now at least) by interceding with Amazon on Ms. Hogarth’s behalf. Spots the Space Marine is again available for sale (find it here, if you’re interested), and Games Workshop has received a lot of bad press. But I see this as a cautionary story, and one that is likely to play out more and more in the coming years.
It seems apparent to me that Games Workshop overstepped their bounds with this trademark complaint. I find it ludicrous that they could even trademark “space marine” because it’s been in common usage in science fiction since the early 1930s, which pre-dates the company by many, many decades. Heinlein used the term directly in some of his early stories (e.g., “Misfits“), and created what is now considered the stereotypical space marine in his genre-classic and award-winning novel Starship Troopers (1959), although he never calls them space marines directly in the book. Wikipedia has an entire page devoted to “Space Marine,” detailing it’s usage in science fiction books, movies, and games (they also have short paragraph on this trademark story, too.).
Prior to growth of internet commerce, this complaint probably wouldn’t have happened because it would have been necessary for Games Workshop to bring the complaint directly against Ms. Hogarth, and the parties likely would have wound in court. Given the apparent merits of the infringement claim (or lack thereof), Games Workshop probably wouldn’t fared well before a judge. These days, however, a takedown notice can be filed against a third-party internet service provider (e.g., Amazon, YouTube, etc.), resulting in a fast and easy takedown. Third-party providers aren’t interested in or don’t have the resources to investigate trademark (or copyright) infringement complaints, and removing the potentially infringing material grants the third-party provider safe harbor from future prosecution (at least under the Digital Millennium Copyright Act).
The targets of an improper takedown have no easy way to get their content back up even if they want to fight because there is no counter-notice procedure—they are simply out of luck unless they can find a lawyer to help fight the complaint, which for an independent writer is an expensive alternative. For independent authors and small business, this is a shoot first and don’t bother asking questions later approach on the part of large business and third-party providers, and most of the “little guys” are helpless to do anything about. Unfortunately, this appears to be the state of things now.
What can be done? I’m not sure, but groups like the Electric Frontiers Foundation are fighting improper takedown notices. They also have a lot of information up on the web site about the these notices and the Digital Millennium Copyright Act. If nothing else, I think it’s important for people to educate themselves, especially if you’re a small business or and independent author.