Copyright & Trademark in the Geek World. Part 2: Games Workshop Sends in the Space Marines

Trademark law basically started out as consumer protection law, but over time has also been turned into a tool for anti-competitive practices. The theory was that consumers should be protected from unscrupulous sellers attempting to pass off their goods as someone else’s. From trademark, we get concepts like false advertising, brand dilution, consumer confusion (…there’s a concept actually called a moron in a hurry, when looking at how likely someone is to be confused), and so on. People can trademark things like logos, phrases, brand names- basically, something that is associated with things sold: goods and services and the sources of those goods and services.

There are registered and unregistered (common law) trademarks. Common law trademarks are more limited then their federally registered counterparts- they’re developed merely by using the trademark commercially, not registered, and usually related to a specific geographical region. They also lack some other statutory protections. For something to act as a trademark, it usually needs to be involved in trade- actual commerce. And not only does it need to be involved in trade, but it needs to be involved in trade in a specific commercial area. Apple Computers (now Apple Inc.), for example, didn’t have to worry too much about competing with the very different company Apple Music (owners of the Beatles catalog) until it got involved with iTunes and the music industry, and then those companies had to work things out because they were competing in the same area. And neither of them should be too concerned with people selling the fruit. Trademark does not have much to do with creativity- that’s largely copyright’s bailiwick- and, in fact, things can at times be trademarked that other people created, even against their wishes.

One of the things about trademark, though, is that unlike copyright and patents there is an obligation for trademark holders to protect their trademarks. Generic terms can’t be trademarked- and once a term has become generic, then it loses its trademark protection (this process is sometimes referred to as trademark erosion). Aspirin. Elevator. Kerosene. Zipper. All of those were once trademarks that have been lost. That’s why trademark holders for Kleenex, Band-Aids and Xeroxes try very hard to make sure that those terms don’t become generic. Even given all that, though, there are limits.

There’s this idea that all uses of a trademark have to be policed. Several years back, Cory Doctorow referred to this as “a fairy tale that trademark lawyers tell their kids at night to reassure them that they’ll have a healthy college fund.” It’s not true for every use. If someone isn’t using the term in a competing commercial space, for example, then the terms does not have to be protected. Trademark holders do not have the right to police others use of the works in other spaces- and there a concept of fair use with trademarks, as well. For example, you can absolutely use trademarks to describe what they’re actually intended to describe. I can use the trademarked name “Games Workshop” to talk about Games Workshop. And beyond all that- and a lot of lawyers who should know better seem to forget this- you don’t have to be a jerk about it when you do decide you need to act.

So, “Space Marines.” Space Marines is a term that has been around for some time in fiction. It’s also a term used by Games Workshop in its miniatures and games lines. Games Workshop does have a registered trademark for space marines for those lines- but although they’ve created fiction involving their space marines, they do not have a registered trademark in the book/ebook space. In this kerfluffle, they contacted Amazon to take down a book that used the term “space marine” in the title. Why? What they seem to be attempting to assert in this situation is that they have common law trademark in the term “space marine” in books and ebooks. Essentially, they appear to be arguing that anyone who thinks “space marines” in fiction should think “Games Workshop.” They seem to be trying to un-genericize the term and create a carved out commercial space for them and then alone, excluding others, which according to their press release is because they have a duty to their shareholders. This is a Bad Thing for many reasons, and the whole event illustrates some of the problems with the system and the law that I alluded to in my last post.

First, of course, there’s the obvious idea that they’re taking a term with a rich history in fiction and attempting to privatize it. There’s a power discrepancy between Games Workshop and the indie author. There’s also the idea that Games Workshop has to be predatory in this manner to appease their shareholders. That’s silly- negative publicity will also hurt their profits. That’s one reason why the controversy is important- people have to show GW and others that this type of behavior isn’t acceptable. And people have reacted. There’ve been author complaints, blost posts, news articles, comments- I even discovered that someone at my school had been a fan of Games Workshop fiction, who has now sworn off of them. That’s bad for everyone.

So far, all GW has done is double down- they’ve reiterated that they were right to do this, and for a time they also deleted and banned people who commented on their Facebook wall about it. They even banned a fellow academic who was only asking for their side of the story. They are allowing comments on their explanation, but they’re sticking to their guns. That’s not good corporate behavior. While their actions might be technically legal, that doesn’t make it right.

Now, Amazon also messed up. Games Workshop sent them a cease-and-desist, and they unnecessarily complied. While there IS a notice-and-takedown provision for taking down copyrighted material, there is no such equivalent for trademarks. They’ve since made the book available again, possibly thanks to some help from EFF. And Spots the Space Marine by MCA Hogarth has received a lot of attention, and portions of sales are donated to the Wounded Warrior Project, so there’s some positives there. Let’s hope Games Workshop learns something, too.

Copyright & Trademark in the Geek World, Part 1: Geeks have Coulton’s Back

If you’ve been paying attention to geek-related news, you may have read about the following stories:
*“Glee” used a version of Jonathan Coulton’s “Baby Got Back” without credit, payment, or other acknowledgment.
*Games Workshop had Amazon take down an indie book because the author used the term “Space Marine” in the title.

These stories provoked outrage among various groups of fans and other folks on the Internet: it’s evident that *something* isn’t right, or fair going on in each of these situations. I see the problems as related to a) the law, and b) how legal practices work, e.g., tends to favor those with money.

The Coulton event (2) primarily deals with copyright. The Games Workshop event primarily deals with trademark. These are related subjects, but they are quite different legally. Popular articles/accounts often confuse the two. I’ll talk about each in turn.

Let’s look at the copyright issue. Copyright is my area of study. My favorite copyright attorney once described copyright to me as “arcane” (2) and “labyrinthine.” It can be confusing, understood by few and overly complicated. Over time, it’s played a bigger and bigger role in people’s everyday lives. Whereas in the 70s, I’m told, you would have to exert yourself to find a story about copyright in the news, today I go through several a day. So, here’s a quick and dirty look at the situation:

COULTON & GLEE

Jonathan Coulton probably used what’s referred to as a statutory compulsory mechanical license to cover Sir Mix-a-Lot’s “Baby Got Back” a few years ago. Glee then copied that arrangement for an episode. What’s that all mean?

So, copyright covers several uses of a work. Absent an exception (3), such uses are the exclusive right of the copyright holder (4). One of those rights is the creation of a derivative work, which to keep things simple we’ll say a work based on an already existing work. However, once upon a time Congress cared about making sure that copyright holders couldn’t completely lock down content. Cover songs have a special place in copyright law (5). Basically, the copyright holders of a song (6) cannot stop someone from making a cover song provided the person making the cover song uses the statutory compulsory mechanical license. Statutory = in the actual statute. Mechanical = making a “mechanical” reproduction of the song (the term is from sheet music days, but basically means making a copy). Compulsory = the copyright holder cannot deny this use if the law is followed. The person making the cover has to pay a compulsory rate to the song writer, the amount of which is determined by the Copyright Royalty Board every few years. The total amount is based on things like the number of copies sold, the number of people who hear the song, and so on.

So Jonathan Coulton called up the Harry Fox Agency (the group that usually handles the compulsory license) and got a license to make a cover of Baby Got Back.

So if you’re not lost yet, now it gets complicated. =P

While the compulsory license does allow you to create a reinterpretation of the work, it does not allow you to change “the fundamental character” of a work with your reinterpreation (which can lead to legal fun), and more on point, the statute (17 USC 115(a)(2)) explicitly does not convey additional copyright protection to the new arrangement without consent of the copyright holder. So unless Coulton got permission from the copyright holder of Baby Got Back, then he doesn’t have copyright protection for his arrangement.

So, Glee basically got the same or a similar license from the Harry Fox Agency, and since Coulton didn’t have copyright protection in the arrangement, they could legally use the arrangement without legal hassle.

He might have some protection if they actually used his tracks, though, because unlike the arrangement, those specific recordings ARE probably protected by copyright. And that’s probably what he’s looking into.

The other thing to remember is this: in most situations, license trumps copyright law. If the specifics of Jonathan Coulton’s license come into play at all, a lot of the legal issues can’t be figured out by looking at the statute.

So… is what Glee did legal? Maybe, if they didn’t use the exact recordings (which is in dispute). Is it fair and/or ethical? Heck no. This is one of those disconnects between law and fairness. Coulton should be getting credit for his arrangement without having to shame Fox.

1. …The Coulton Event is the name of my Paul & Storm cover band… *drumbeat*
2. Definitely arcane. The next time your party wizard starts going off about magic, pretend he’s talking about copyright and RP accordingly.
3. There are many exceptions. Don’t think that copyrights are the be-all and end-all; these exceptions are important.
4. The copyright holder is not necessarily the author/creator. Keep that in mind.
5. And the Abyss.
6. And songs can have lots of copyright holders. The song writer, the lyric writer, the performer… it takes a village, people.