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Allows for something specific that they can claim the name on as opposed to something generic like Imperial Guard (used throughout history).

12thRonin wrote:
Allows for something specific that they can claim the name on as opposed to something generic like Imperial Guard (used throughout history).

The trail allowed for all name to be used, even the 'nids. I didn't know that was used throught history.

weeble1000 wrote:

 Yonan wrote:
Kirby accusing Chapterhouse of theft in his preamble was suggested to be grounds for libel. Would be interesting to see if CHS take that up and nail GW even further into the wall.

Not really. A jury did find that Chapterhouse unfairly appropriated certain Games Workshop copyrighted materials. It isn't much of an untruth to describe that as theft, at least insofar as defamation is concerned. No, Kirby is on firm ground there. But he also called the lawsuit an indecent expense for far too little gain, so good luck declaring that expense as an asset without incurring liability.

I'm surprised to see your stance on this.

Theft is a criminal activity as defined under most countries laws. IP infringement is a civil matter. The two have different legal definitions. Kirby as acting CEO should know the difference and be held accountable for his statement "if" he used the word in direct reference....Or have the definitions changed recently?

Now I would agree in that there really isn't a case for libel in that Kirby never directly mentioned Chapter House Studios.

Later,
ff

Noir wrote:
Question... The Lawsuit says it fair use to use GW terms for selling releted/add-on products (i.e. Eldar and such). What then is the point of the IG name change, as it is already legal for use too.

It is protectable by trademark. That's a fact, at least insofar as it is more so than "Imperial Guard." Was it worth the loss of continuity and goodwill? That's an important question.

As I understand it, Chapter House and anyone else are entitled to market "parts compatible with Games Workshop™'s Imperial Guard", and they are equally entitled to market "parts compatible with Games Workshop™'s Astra Militarum™".

If GW thought they were preventing this by changing the name, perhaps that is merely another evidence of their seeming incompetence and ignorance about IP law.

Astra Militarum™

Games Workshop would actually have to apply to trademark that name to use the "™" which to date they have not done so in the UK or USA. Not that it probably matters protection wise but I do find it odd they haven't applied to protect that mark.

On the other hand my 15 year old son saw the new name and laughed probably due to his 1st year Latin knowledge and put the army book back. He hasn't touched his IG army since the AM release.

 Consul Scipio wrote:
Astra Militarum™

Games Workshop would actually have to apply to trademark that name to use the "™" which to date they have not done so in the UK or USA. Not that it probably matters protection wise but I do find it odd they haven't applied to protect that mark.

On the other hand my 15 year old son saw the new name and laughed probably due to his 1st year Latin knowledge and put the army book back. He hasn't touched his IG army since the AM release.

"™" exists by virtue of their use in trade. ® would indicate a registration.

I can slap a ™ on nearly everything - it really doesn't have much bearing on the strength of the mark or any aspect of its legal status (up until the point it is challenged and overturned...which then would cause issues if I continued to use it).

I always thought the move away from Imperial Guard was down to Disney gaining the Star Wars franchise, but I had no real basis for that though.

Heh. I'd pay to see GW bring suit against Disney for copyright infringement.

Anvildude wrote:
Heh. I'd pay to see GW bring suit against Disney for copyright infringement.

Actually, I interpret it the opposite way. If its true that GW changed the name because Disney acquired Star Wars, then its because they were afraid that Disney would try to sue them.

The sense of schadenfreude I would experience should Disney sue GW for copyright infringement, would be positively euphoric.

What I don't quite understand is that GW has marked trademark onto 'landspeeder' for years and has never tried to rename that.

That, oddly enough is something that was properly trademarked by Lucas in all the correct contexts (Toys and Games) that should have caused GW to think 'no way.'

However, as that's lapsed now, due to well, decades and decades since the film came out... Has GW been able to get away with it?

Noir wrote:
Question... The Lawsuit says it fair use to use GW terms for selling releted/add-on products (i.e. Eldar and such). What then is the point of the IG name change, as it is already legal for use too.

Imperial Guard offers no trademark protection at all because is so generic. At least AM is trademarkable and protectable.
Use in connection with add-on products is a separate issue unrelated how protectable the new trademark is.

Protectable in what sense? All it means is that no-one can make wargame figures and call them "Astra Militarum" except GW.

 Kilkrazy wrote:
Protectable in what sense? All it means is that no-one can make wargame figures and call them "Astra Militarum" except GW.

Which is non-trivial, given that you likely could get away with making miniature wargame figures marketed as "Imperial Guard."

You could but I don't think people did? I guess the lawsuit cleared up that you could do it so people might have started to do it, but more "reputable" companies like Vic for example would probably still have stuck to things like their "Arcadian" guard regardless imo.

There are Napoleonic Imperial Guard of course, but no 40K Imperial Guard except GW's.

As I understand the matter, trademarking Astra Militarum does not prevent people from making and advertising models "compatible with Astra Militarum™".

 Kilkrazy wrote:
There are Napoleonic Imperial Guard of course, but no 40K Imperial Guard except GW's.

As I understand the matter, trademarking Astra Militarum does not prevent people from making and advertising models "compatible with Astra Militarum™".

Sure, because that likely falls under fair use. But "Astra Militarum" is a fanciful, made up mark that nobody else in the market is using. Ergo it is by definition a stronger trademark. If GW were asking a consultant to help them identify ways to shore up the company's IP, an easy, short-sighted suggestion would have been to get rid of the generic marks.

Is GW looking to sue someone? Probably not. Is anyone else going to use "Astra Militarum?" Probably not. It is a pretty stupid phrase. So in terms of the practical value it provides GW, there really is not much. Objectively, the switch provides the value of a mark that is enforceable, should one be interested in enforcement, though Kirby makes it pretty clear in his preamble that GW aint looking to enforce its IP anytime soon.

GW burned the goodwill and, ironically, the recognition of the "Imperial Guard" mark to get a mark that is of less actual value, but greater potential value.

Now, if you want to be a dick, you could register the mark for other product categories than those GW is actually using it in and start putting out an "Astra Militarum" brand of t-shirts, gaming mats, coffee mugs, etc. You could effectively 'cyber-squat' the mark because GW was too stupid to register the mark, has only actually used the mark in commerce with a narrow band of product categories, and a federal judge has already ruled that none of GW's marks are famous, and thus not enforceable outside of their designated product categories. If "Warhammer" is not a famous mark, then "Astra Militarum" definitely is not. Then when GW goes to make an "Astra Militarum" tshirt, you could sue the company for infringing your unique, protectable trademark.

weeble1000 wrote:

Noir wrote:
Question... The Lawsuit says it fair use to use GW terms for selling related/add-on products (i.e. Eldar and such). What then is the point of the IG name change, as it is already legal for use too.

It is protectable by trademark. That's a fact, at least insofar as it is more so than "Imperial Guard." Was it worth the loss of continuity and goodwill? That's an important question.

And how many people are just going to go on calling it the Imperial Guard anyway?

I know that I am. I do not like Badus Latinus names (though Igpay Atinlay names might be fun).

The Auld Grump, I'll continue to call Stormtroopers Stormtroopers, too....

 Kilkrazy wrote:


As I understand the matter, trademarking Astra Militarum does not prevent people from making and advertising models "compatible with Astra Militarum™".

Correct, but it does prevent people from selling figures advertised as "Astra Militarum" without the likelyhood of a lawsuit, which is not likely to be the case with figures advertised as "Imperial Guard".


..plus what Weeble said....

weeble1000 wrote:
Then when GW goes to make an "Astra Militarum" tshirt, you could sue the company for infringing your unique, protectable trademark.

Wouldn't you have to show that you've used that trademark prior to GWs use? That you came up with the name independently from GW's use?

 prplehippo wrote:

weeble1000 wrote:
Then when GW goes to make an "Astra Militarum" tshirt, you could sue the company for infringing your unique, protectable trademark.

Wouldn't you have to show that you've used that trademark prior to GWs use? That you came up with the name independently from GW's use?

You would only have to show that you produced "Astra Militarum" t-shirts before GW made "Astra Militarum" t-shirts.

Creating the word "Astra Militarum" and using it to sell a game and a model doesn't give GW trademark protections over any and all other conceivable uses of that name. Trademark only gives you protections in those product-markets within which you actually trade.

 prplehippo wrote:

weeble1000 wrote:
Then when GW goes to make an "Astra Militarum" tshirt, you could sue the company for infringing your unique, protectable trademark.

Wouldn't you have to show that you've used that trademark prior to GWs use? That you came up with the name independently from GW's use?

Sure. You don't get a mark without selling a product.

Also, that example was made by way of demonstrating how trademark law works. The point being that GW took the time to change the name, but not the effort to properly establish the mark.

I'm kind of surprised that we haven't heard anything recently about this. Wonder what's going on.

 skyth wrote:
I'm kind of surprised that we haven't heard anything recently about this. Wonder what's going on.

Yea, I'm surprised too. The briefing schedule has been suspended since early February, ostensibly for Rule 33 settlement discussions.

Kirby did admit to the lawsuit being an expensive mistake. Who knows what is going on?

GW's legal budget ran out?

Could such a thing happen? Could GW afford to give in? Or do they have to fight to the bitter end no matter what?

If GW dropped everything and tried to walk away right now CH would still want to appeal and I believe that means either GW are forced to stay in or CH will be able to appeal uncontested and walk all over them.

I think. Might want a legal expert to explain that.

On top of that however there is the issue of WILL they give up. They seem to be in a terrible position and being called out by shareholders for wasting money but GW see their IP as their greatest asset and they see 'threats' like CH as directly attacking that IP.

The case is already in appeal. I feel sure that Games Workshop want to get away from it as quickly and cheaply as they can. It has been a huge disaster for them and will continue to bleed their legal budget uselessly if continued. The biggest problem for them being that rather than successfully defending their IP, they managed to lose previously uncontested defensive rights to huge swathes of it.

Presumably the two parties can come to a deal out of court. The law usually encourages arbitration and compromise if possible rather then spending court time.

However if Chapter House and their heavyweight pro bono IP law firm supporters think they can win, they have no reason to compromise, certainly not at the point that might suit Games Workshop. The Chapter House side might reasonably feel they can win back a big chunk of the 25% of GW claims on which they lost.

That would put GW in an even worse position than right now. The whole thing is a disaster of GW's own making, though, and they deserve neither sympathy nor mercy from anyone.

weeble1000 wrote:

 skyth wrote:
I'm kind of surprised that we haven't heard anything recently about this. Wonder what's going on.

Yea, I'm surprised too. The briefing schedule has been suspended since early February, ostensibly for Rule 33 settlement discussions.

Kirby did admit to the lawsuit being an expensive mistake. Who knows what is going on?

Do you have any guesses? Could this mean settlement negotiations are making progress? Surely Chapterhouse would want to push this forward otherwise...?

If GW had offered Chapterhouse the wheelbarrow full of money that they have paid their lawyers - just to close up shop and walk away - the money would have been spent to greater effect. (One difference between GW and TSR - settling out of court and paying out sums to the folks that they were suing was their way of handling things.)

The Auld Grump