Internet retailer Amazon has re-instated an e-book on its website that it removed last year after complaints about trademark infringement.
Amazon pulled Spots the Space Marine in December 2012 after Games Workshop claimed common law trademark rights for ‘space marine’ (covering books). The toy-maker publishes e-books under the Warhammer brand, which features fictional characters called ‘space marines’.
The book’s removal prompted a furious online backlash, with science fiction enthusiasts claiming the term ‘space marine’ had been used generically since at least the 1930s. Games Workshop has owned a US trademark for ‘space marine’ (for goods such as games, not books) since 1987.
In a blog post, the book’s author Maggie Hogarth said it re-appeared on Amazon on February 7. She said Amazon’s move was “one small battle in a long war” against over-zealous trademark owners seeking to claim rights over generic terms.
Games Workshop released a public statement that said: “Games Workshop has never claimed to own words or phrases such as ‘warhammer’ or ‘space marine’ as regards their general use in everyday life.”
Amazon appears to have reinstated the book because Games Workshop does not own a US trademark for ‘space marine’ that protects books, and a large amount of general use pre-dates the company’s common law claims over books, said Chris McLeod, partner at law firm Squire Sanders.
He added: “It’s hard to say whether the company was overzealous [when filing its original complaint] because it does have a mark covering all goods, including books, in the EU.”
Despite the existence of the EU mark, McLeod said Games Workshop seems to have filed its complaint only against Amazon’s US site. The book remains on sites in countries such as the UK, which is covered by the EU mark.
Matt Sammon, partner at Marks & Clerk LLP, said filing a complaint with Amazon was a sensible approach, adding: “Court action would have been heavy handed and, to Hogarth’s own admission, litigation would have blown her out of the water.”
He said the case shows what a tricky position Amazon and online marketplaces like eBay are in when they’re dealing with alleged IP infringement.
McLeod added: “The case confirms that trademark registrations are far stronger than relying on use. It also shows that context is everything: if the term is in a book title and the book has existed for a long time, then you might struggle to show that the mark is distinctive, not descriptive.”
The case could yet go to court.
Amazon did not respond to a request for comment.
This article was first published on 12 February 2013 in World IP Review
amazon, space marines, warhammer, games workshop, maggie hogarth