Im not sure GW has a legal right to tell people they cant sculpt new miniatures that look like their stuff. Ive consulted with 2 lawyers, and they have told me that if we have proof that the sculpts are new and not GW minis with GS on them, our figure is just another sci-fi super soldier.

Granted, we may not be able to list him as a chaplain or space marine on the site, but there is nothing wrong with calling him a special character - dragon cult leader.

Ive tried to do as much research as possible, and what gives me credence is sites like www.americanmuscle.com. They sell Mustang custom aftermarket parts, and use Mustang all over thier website. Ford is a much bigger company then GW, so if that website can use "Mustang" to describe thier car parts, I think we are ok with "Space Marine".

Anyways, thanks for your concern, we already have a hefty legal fund waiting if needed.

Sincerely,
Nick
ChapterhouseStudios.com
sales@chapterhouse.com

Polonius wrote:So, we're going to have a legal discussion amongst a group of people with ( a few exceptions aside) no legal expertise and no access to the relevant facts.

Clthomps wrote:Polo, please troll somewhere else.

Polonius wrote:So, we're going to have a legal discussion amongst a group of people with ( a few exceptions aside) no legal expertise and no access to the relevant facts.

If anybody is curious, I'm going to start a roundtable discussion on Thoracic Surgery in a little bit, as soon as I finish my debate on Byzantine Art...

Personally I do not care much about whether what they are doing is legal or not and as far as I am concerned they can do whatever

TBD wrote:
The sole purpose of my comment was to establish that it is not clear cut what the exact legal position is, regardless of what Chapterhouse and their presumed lawyers claim.

Mr. Burning wrote:Clthomps,

IMO I look at the sketches and the greens that are up in the news section thread and I don't think 'Space Elf' I think 'Eldar'. I'm sure other users think so. Now if I had that IP and I saw Chapterhouses work I would be concerned.

This is my opinion.

Clthomps wrote:Well that is one major thing that pops up on your forums, To put it to rest once and for all why don't you post info about your lawyer. I am sure he has a name and certain qualifications that suit him for IP work.

Ketara wrote:Haven't we had this discussion multiple times before?
Allow me to summarise the next 5 pages of discussion quickly.

Poster 1: Chapterhouse can do what they like.
Poster 2: Nuh-uh! I just looked at GW's IP page, and they're clearly breaching it!
Poster 3: : Actually, GW's IP page isn't valid on this. They lie about a lot of stuff.
Poster 2: Yeah, but this is blatantly copyright!
Poster 1: Actually, GW copies a load of the their stuff *insert generic chaos star comment*
Poster 4: I don't care that stuff is awesome!
Poster 5: Then how come all the other companies get shut down? Why are they special?
Chapterhouse: Actually, we have a legal fund to set up so we don't have to fold if we get a C&D.
Poster 2: Yeah, but you guys are taking the bread out of the designers mouths! Make your own stuff!
Poster 5: I just read a generic law text that says they can get sued.
Poster 1: : How many times have we had this discussion before?
Poster 6: Too many.
Poster 3: Yeah, but I can point out a problem with that text by quoting a legal case I just looked up on Wikipedia!
Chapterhouse: We actually consulted a lawyer who said we can do this.
Poster 6 You guys do realise you guys are both wrong, right?
Poster 2: Nu-uh! Because this other wikipedia case proves that what they're doing is wrong.
Poster 5: lol, you guys gonna get shut down
Hired Gun 27: You guys are terrible people and are going to get sued by the almighty and righteous GW.
Poster 1: Who let the hired gun in?


And so on ad infinitum.

I vote to be Poster 1. Who wants to be Poster 6?

Ketara wrote:Haven't we had this discussion multiple times before?
Allow me to summarise the next 5 pages of discussion quickly.

Poster 1: Chapterhouse can do what they like.
Poster 2: Nuh-uh! I just looked at GW's IP page, and they're clearly breaching it!
Poster 3: : Actually, GW's IP page isn't valid on this. They lie about a lot of stuff.
Poster 2: Yeah, but this is blatantly copyright!
Poster 1: Actually, GW copies a load of the their stuff *insert generic chaos star comment*
Poster 4: I don't care that stuff is awesome!
Poster 5: Then how come all the other companies get shut down? Why are they special?
Chapterhouse: Actually, we have a legal fund to set up so we don't have to fold if we get a C&D.
Poster 2: Yeah, but you guys are taking the bread out of the designers mouths! Make your own stuff!
Poster 5: I just read a generic law text that says they can get sued.
Poster 1: : How many times have we had this discussion before?
Poster 6: Too many.
Poster 3: Yeah, but I can point out a problem with that text by quoting a legal case I just looked up on Wikipedia!
Chapterhouse: We actually consulted a lawyer who said we can do this.
Poster 6 You guys do realise you guys are both wrong, right?
Poster 2: Nu-uh! Because this other wikipedia case proves that what they're doing is wrong.
Poster 5: lol, you guys gonna get shut down
Hired Gun 27: You guys are terrible people and are going to get sued by the almighty and righteous GW.
Poster 1: Who let the hired gun in?


And so on ad infinitum.

I vote to be Poster 1. Who wants to be Poster 6?

Chapterhouse wrote:

TBD wrote:
The sole purpose of my comment was to establish that it is not clear cut what the exact legal position is, regardless of what Chapterhouse and their presumed lawyers claim.

That is the part I take offense with. No matter what you may think, that makes it sound like we are full of hot air and our claims to have hired an attorney are lies and probably not true. Do we "presume" GW has lawyers, no, just because we are a smaller company doesn't mean we are any less correct or legal.

Ketara wrote:The great thing is, I could attach usernames to each of those posters, as each of the previous threads has been so similar!

Actually, I fancy a change of role this time. I've got too much post count for the hired gun, so maybe Poster 5...

TBD wrote:

Chapterhouse wrote:

TBD wrote:
The sole purpose of my comment was to establish that it is not clear cut what the exact legal position is, regardless of what Chapterhouse and their presumed lawyers claim.

That is the part I take offense with. No matter what you may think, that makes it sound like we are full of hot air and our claims to have hired an attorney are lies and probably not true. Do we "presume" GW has lawyers, no, just because we are a smaller company doesn't mean we are any less correct or legal.

It does not mean anyone thinks you are lying at all, but nobody here can confirm who these lawyers are, so until that happens I think "presumed" is the correct term to be used.

Automatically Appended Next Post:
Clthomps wrote:
Well that is one major thing that pops up on your forums, To put it to rest once and for all why don't you post info about your lawyer. I am sure he has a name and certain qualifications that suit him for IP work.


Sure, I can put my money where my mouth is

Corby Bell
Garlitz Bell, LLP
Out of Dallas Texas.

He charged a lot for his time, so unless you want to be billed, I wouldn't bug him too much.

Polonius wrote:I'm actually pretty comfy right here....

I mean, I think you're intentions are good, I just think there needs to be a pretty major caveat on any discussion that takes place, namely, that nobody really knows what they're talking about.

If it makes people feel better, than god speed, but there's a more limited utility than you may think to this.

Polonius wrote:....as I finish my debate on Byzantine Art...

TBD wrote:

Chapterhouse wrote:

TBD wrote:
The sole purpose of my comment was to establish that it is not clear cut what the exact legal position is, regardless of what Chapterhouse and their presumed lawyers claim.

That is the part I take offense with. No matter what you may think, that makes it sound like we are full of hot air and our claims to have hired an attorney are lies and probably not true. Do we "presume" GW has lawyers, no, just because we are a smaller company doesn't mean we are any less correct or legal.

It does not mean anyone thinks you are lying at all, but nobody here can confirm who these lawyers are, so until that happens I think "presumed" is the correct term to be used.

Moopy wrote:

Polonius wrote:....as I finish my debate on Byzantine Art...

If it's encrusted with gold mossaics then it must be Byzantine art! Basilica of San Vitale FTW! Go Emperor Justinian!

Putting the period of 329-1453AD asside, I look at the topic this way.

You can do motifs and be fine. All the scally armor for the rhinos is a great example- it's the IDEA of the Salamanders that was involked, but there was nothing specific. Same with the SW shield- Norse iconography + high tech = fits fine. If the used the actual SW's iconic wolfs head, that's something else.

Which brings me to the greens of the Eldar helmets. That is very distinctively GW right there, and a little too much so to be safe. If Chapterhouse made a bunch of stuff you could stick ONTO the Eldar helm (clusters of spirit stones, cool visors or mag-goggles, etc) then that would be fine. But to basically rescuplt a very distinctive helmet in roughly the same style is probably trouble- you've moved from the IDEA of Eldar (which is safe for derivitive work) to actual IP Eldar.

Chapterhouse wrote:

Well keep in mind those are the very beginnings of the helms, they will have a ton of other stuff added to them. Does GW have the claim to a smooth mask with slanted eyes on it? I sure hope not or we are not the only company in trouble.

Moopy wrote:

Chapterhouse wrote:Well keep in mind those are the very beginnings of the helms, they will have a ton of other stuff added to them. Does GW have the claim to a smooth mask with slanted eyes on it? I sure hope not or we are not the only company in trouble.

As I am also an artist, I look at it this way:

If you have to ask the question, "Is this really too close to the original style?" then I have already answered the question with a yes...

aka_mythos wrote: If GW believed they could go forward they would. They don't, because they believe they'd lose and others would realize how paper thin GW's legal threats actually are.

aka_mythos wrote:
The hole in this logic is that it ignores that GW has created an atmosphere where artists believe they have to question what they're doing at all. GW has fostered an atmosphere of fear, where good people cannot express themselves in an artistic way and benefit from that effort.

BluntmanDC wrote:one thing i have never understood is why GW have been able to trademark 'space marine' when the term was first coined in the 1930's by the guy who wrote starship troopers (as well as other classics) way before GW ever existed

LunaHound wrote:I think the confusion still exist because:

1) Chapter House is doing things within the "legal" boundary.

However.

2) Chapter House cannot deny the product they made are specifically for GW product as add ons.
In other words we ask a simple question , If GW doesnt exist all of a sudden , which company's product do these custom made Chapter House product be used on? Nothing.

So basically its legal , but we all "know" whats going on *wink wink.

Chapterhouse wrote:

LunaHound wrote:I think the confusion still exist because:

1) Chapter House is doing things within the "legal" boundary.

However.

2) Chapter House cannot deny the product they made are specifically for GW product as add ons.
In other words we ask a simple question , If GW doesnt exist all of a sudden , which company's product do these custom made Chapter House product be used on? Nothing.

So basically its legal , but we all "know" whats going on *wink wink.

As far as I know there is no law that says you cannot make custom (and most importantly new designed) parts for another companies products.

As long as you are not claiming they are official, endorsed, or using trademarks illegally you should be ok.

I cannot go out there and make and sell a Space Marine LandRaider model. I could go out there and make a "Dreadnought Drop Pod" though (notice the use of words not owned by GW in any way).

Chapterhouse wrote:I would hate to delve into something that GW already makes (or will in the near future).

I hear Forge World will have a thunderwolf soon.

If I think FWs one is too damn expensive for the casual gamer, and we can a cy-wolf better and cheaper then it will happen

I have never ran into a tournament or customer who said they couldnt use our bits.

#1 Most of our pieces are so small or such a small percentage of the model it wouldnt matter.

#2 We arent that well known, or our bits are not.

#3 Pfft, just white-lie and say you made them yourself, I wont cry as long as you are not reproducing said bits for sale.

Chapterhouse wrote:I would hate to delve into something that GW already makes (or will in the near future).

I hear Forge World will have a thunderwolf soon.

If I think FWs one is too damn expensive for the casual gamer, and we can a cy-wolf better and cheaper then it will happen

I have never ran into a tournament or customer who said they couldnt use our bits.

#1 Most of our pieces are so small or such a small percentage of the model it wouldnt matter.

#2 We arent that well known, or our bits are not.

#3 Pfft, just white-lie and say you made them yourself, I wont cry as long as you are not reproducing said bits for sale.


Automatically Appended Next Post:
FWIW, I have popped the Shoulder pads off my model with little damage, edge clippers work well on the plastic ones and worst case, you just have to re-glue the arms.

Kanluwen:

Ah, but I could sell a product we designed as a Dreadnought Drop Pod. GW has no claim to that title or words. That or Dreadnought Class Drop Pod, or Heavy Drop Pod - Dreadnought Class, etc etc etc

JohnHwangDD wrote:For those of you looking for another analogy, consider how Mozilla Firefox (3rd party software which pays ZERO royalty to Microsoft) runs on Windows. Firefox uses known Windows interfaces (which are not copyrightable), but incorporates ZERO MS IP.

Piggybacking on other IP can be done, but it needs to be done carefully.

aerethan wrote:GW can't copyright a bullet shaped helm.

If so then I can copyright the square and rectangle, and every box on the planet will have to pay me for licensing.

insaniak wrote:Is anybody?

There are very few original ideas. Everything draws on something else for inspiration.

Mannahnin wrote:Deleted pointless posts of fighting or commentary thereon from three posters.

Let's keep it civil, folks.

Grot 6 wrote:Chapterhouse needs to start branching out into other markets. The writing on the wall is there, WE all can read it.

Personally, after the past month on Dakka, I am really beginning to reconsider my 15 or so year commitments to playing thier game and am debating lightening my life of GW.
Obviously they do not want players anymore. They would rather get thier money by downsizing and hasseling fans, smaller companies, and generally anyone they think they can get a easy doller out of. Is it just me, or do others feel like they are being played for marks over something that is supposed to be a hobby?

Chapterhouse should start doing what others are doing and looking to expand the Superhero miniatures, Wild Weird West/ World War Genere, or other countless other alternatives.

The fact that we are STILL having this conversation would put me into looking to other areas, irregardless of lawyers, and outside distractions.

Models, alternative victorian horror, Sci Fi, Where is the miniatures game for Sanctuary, Dr Who, Primal, Torchwood, or some time traveling games out there?

...
...

insaniak wrote:For what it's worth, the fact that GW haven't doesn't mean that they won't.

insaniak wrote:
The eBay seller 'mac-ace' who was busted a couple of years ago for selling counterfeit minis was going for well over a year before GW actually took (visible) legal action.

I believe Enigma (the original one, not the current Enigma Miniatures, who are completely different) and Daemonblade were also both trading for well over a year before getting stomped on.

Do tournaments give customers trouble that use your upgrades though?

JohnHwangDD wrote:For those of you looking for another analogy, consider how Mozilla Firefox (3rd party software which pays ZERO royalty to Microsoft) runs on Windows. Firefox uses known Windows interfaces (which are not copyrightable), but incorporates ZERO MS IP.

Piggybacking on other IP can be done, but it needs to be done carefully.

Fishboy wrote:

Do tournaments give customers trouble that use your upgrades though?

This has been my real question too. I love the stuff and use it but am wondering if I will get thrown out of the GT event if I bring it. Individual events have not been a problem at all but if it is the GW event will they prevent me from using the army?

Polonius wrote:So, we're going to have a legal discussion amongst a group of people with ( a few exceptions aside) no legal expertise and no access to the relevant facts.

If anybody is curious, I'm going to start a roundtable discussion on Thoracic Surgery in a little bit, as soon as I finish my debate on Byzantine Art...

Hellfury wrote:

Polonius wrote:So, we're going to have a legal discussion amongst a group of people with ( a few exceptions aside) no legal expertise and no access to the relevant facts.

If anybody is curious, I'm going to start a roundtable discussion on Thoracic Surgery in a little bit, as soon as I finish my debate on Byzantine Art...

Just to reiterate Polonius' comments. Worth repeating.

CT GAMER wrote:

Mannahnin wrote:Deleted pointless posts of fighting or commentary thereon from three posters.

Let's keep it civil, folks.

Yet you have a mod in this thread egging people on and throwing fuel on the fire. Classy.

loki old fart wrote:Its not as if GW copies anyone

kinghammer wrote:Is there a way for you not to list your products as: "salamander pad" or "flesh tearers pad" and still be able to produce your product? Maybe be simple name change is good enough.

Cheers

Ouze wrote:

Hellfury wrote:

Polonius wrote:So, we're going to have a legal discussion amongst a group of people with ( a few exceptions aside) no legal expertise and no access to the relevant facts.

If anybody is curious, I'm going to start a roundtable discussion on Thoracic Surgery in a little bit, as soon as I finish my debate on Byzantine Art...

Just to reiterate Polonius' comments. Worth repeating.

I have no love for GWS and I think CHS makes nice kit. That being said:

I don't have to be a doctor to know rubbing a wound in filth might lead to an infection. Similarly, I don't think you need to be a lawyer to, when presented with, say, a non-Disney site that lists Disney movies by name, including using art from the movie, clicking the links of which lead to non-licensed add-ons, realize you might have a copyright problem.

This page uses 7 pieces GWS artwork (at least one of which might be owned by Relic)). As a layman, I know this might be a problem.

aka_mythos wrote: Counterfeiters are breaking the law and thats a different issue. Chapterhouse is not counterfeiting.

I don't know what happened with enigma or daemonblade, if they were also counterfeiting or what?

As much as GW not suing is not any indication of their intent to; nor is a company following the demands of a cease and desist an indication of guilt.

redstripe wrote:I'll post what I always post in a thread where folks are trying to crucify Chapterhouse.

Whatever it is that Chapterhouse is doing, if they challenge the fascist idea that GW can dictate how I use their products, then they receive my sound support.

There is a pall of fear covering this hobby that anyone who challenges GW will be crushed by the weight of their legal department. Games Workshop is a bully, a bully that is terrified that people will realize they're phonies. They are terrified that people will realize that other people can make fantasy and science fiction games and miniatures and make them with far better quality and for far more reasonable prices. They are terrified that people will realize that they can play with whatever miniatures they want in whatever game they want and that GW has no right to dictate how their miniatures are used.

They jealously guard their stolen ideas to prevent others from pulling the same hoodwink. GW has made money producing games and miniatures that recreate those scenes in all our favorite sci-fi/fantasy movies and novels, from Aliens, to Terminator, to the tales of Camelot, to The Lord of the Rings. They're posers and they are terrified that their ivory tower rests on an increasingly uncertain foundation.

Kilkrazy wrote:

Grot 6 wrote:Chapterhouse needs to start branching out into other markets. The writing on the wall is there, WE all can read it.

Personally, after the past month on Dakka, I am really beginning to reconsider my 15 or so year commitments to playing thier game and am debating lightening my life of GW.
Obviously they do not want players anymore. They would rather get thier money by downsizing and hasseling fans, smaller companies, and generally anyone they think they can get a easy doller out of. Is it just me, or do others feel like they are being played for marks over something that is supposed to be a hobby?

Chapterhouse should start doing what others are doing and looking to expand the Superhero miniatures, Wild Weird West/ World War Genere, or other countless other alternatives.

The fact that we are STILL having this conversation would put me into looking to other areas, irregardless of lawyers, and outside distractions.

Models, alternative victorian horror, Sci Fi, Where is the miniatures game for Sanctuary, Dr Who, Primal, Torchwood, or some time traveling games out there?

...
...

Right here...

http://www.drwhominiatures.co.uk/

The reason why Chapterhouse are doing the things they are doing is because GW have created a large market for bits to customise their SM models, which either they do not supply or only at a high price.

As long as Chapterhouse keep their designs sufficiently generic or differentiated from GW designs, there is nothing GW can do to stop them.

Kilkrazy wrote:Windows™ is trademarked as a computer operating system.

I can make a boardgame called Windows™, featuring a device which allows the user to open portals in space and time -- nicknamed Windows™ -- and MS can't touch me.

I can also sell a utility add-on for Windows™ (copyright of Microsoft Corporation acknowledged, etc.) and I can advertise it as such.

This is why Chapterhouse are able to sell add-ons for GW's Salamanders.

GW resorted to threatening fans with cancelling Blood Bowl™ v6 if 3rd party companies did not stop advertising star player figures because they do not have a legal basis for stopping those adverts.

Hellfury wrote:

Polonius wrote:So, we're going to have a legal discussion amongst a group of people with ( a few exceptions aside) no legal expertise and no access to the relevant facts.

If anybody is curious, I'm going to start a roundtable discussion on Thoracic Surgery in a little bit, as soon as I finish my debate on Byzantine Art...

Just to reiterate Polonius' comments. Worth repeating.

aka_mythos wrote:

kinghammer wrote:Is there a way for you not to list your products as: "salamander pad" or "flesh tearers pad" and still be able to produce your product? Maybe be simple name change is good enough.

Cheers

GW has not copyright on those terms. They are available for anyone to use. If someone came along and said you're neighbor uses the the sceen name "kinghammer" on some other forum, you should change yours, you'd probably laugh. Since GW has no ownership to the names "Flesh tearers" and "Salamanders" it is ridiculous for anyone to change it due to the niche market notoriaty GW has slapped on to some words.

Janthkin wrote:
I actually want to participate in the Thoracic Surgery discussion - sometimes knowledge is a burden, and gets in the way of a good wild-ass conjecture post.

Chapterhouse wrote:I believe those pieces of art are created by fans for USE in relics game. Am I wrong in thinking they are fan created and not owned by GW, anyone get me proof please? (If so they will be modified).

Ouze wrote:I'm actually less interested in the whole copyright discussion, then what it has sprouted - this entirely specious argument that unless you have mastered a field, you are not qualified to hold an opinion on it or partake of a discussion. Can anyone explain this... this instinctual appeal to authority; is it just an innate urge to cling to intellectual provinciality?

Ouze wrote:

Janthkin wrote:
I actually want to participate in the Thoracic Surgery discussion - sometimes knowledge is a burden, and gets in the way of a good wild-ass conjecture post.

I'm actually less interested in the whole copyright discussion, then what it has sprouted - this entirely specious argument that unless you have mastered a field, you are not qualified to hold an opinion on it or partake of a discussion. Can anyone explain this... this instinctual appeal to authority; is it just an innate urge to cling to intellectual provinciality?

As I understand it, there was this recent economic tempest in a teapot - this global economic meltdown business - which could have been largely avoided if some of the parties involved had used some common sense, and asked if "this seems like a good idea" rather then blindly listen to the experts who counseled that yes, it is wise financial business to borrow thirty dollars for every dollar you hold. Not that I'm comparing CHS to, say, Bear Stearns, obviously.

Polonius wrote:So, we're going to have a legal discussion amongst a group of people with ( a few exceptions aside) no legal expertise and no access to the relevant facts.

If anybody is curious, I'm going to start a roundtable discussion on Thoracic Surgery in a little bit, as soon as I finish my debate on Byzantine Art...

Polonius wrote:You know frazz, demanding examples is just snobbery and provincialism. My opinion on whatever you're talking about is just as good as anybody else's.

Chapterhouse wrote:Hmmm a defense fund donation, I like it!

With every donation you will recieve a very Limited Edition, "I stuck it to Games Workshop and all I got was this crappy miniature" mini

Ketara wrote:Haven't we had this discussion multiple times before?
Allow me to summarise the next 5 pages of discussion quickly.

Poster 1: Chapterhouse can do what they like.
Poster 2: Nuh-uh! I just looked at GW's IP page, and they're clearly breaching it!
Poster 3: : Actually, GW's IP page isn't valid on this. They lie about a lot of stuff.
Poster 2: Yeah, but this is blatantly copyright!
Poster 1: Actually, GW copies a load of the their stuff *insert generic chaos star comment*
Poster 4: I don't care that stuff is awesome!
Poster 5: Then how come all the other companies get shut down? Why are they special?
Chapterhouse: Actually, we have a legal fund to set up so we don't have to fold if we get a C&D.
Poster 2: Yeah, but you guys are taking the bread out of the designers mouths! Make your own stuff!
Poster 5: I just read a generic law text that says they can get sued.
Poster 1: : How many times have we had this discussion before?
Poster 6: Too many.
Poster 3: Yeah, but I can point out a problem with that text by quoting a legal case I just looked up on Wikipedia!
Chapterhouse: We actually consulted a lawyer who said we can do this.
Poster 6 You guys do realise you guys are both wrong, right?
Poster 2: Nu-uh! Because this other wikipedia case proves that what they're doing is wrong.
Poster 5: lol, you guys gonna get shut down
Hired Gun 27: You guys are terrible people and are going to get sued by the almighty and righteous GW.
Poster 1: Who let the hired gun in?


And so on ad infinitum.

I vote to be Poster 1. Who wants to be Poster 6?

Sgt_Scruffy wrote:LOL. That's the funniest thing I've heard all day

Fascist? Seriously? I can't believe you actually called them fascists. Although not quite an example of Godwin's Law, I shake my head that you compare Games Workshop to a fascist government like Nazi Germany or Fascisti Italy.

Sgt_Scruffy wrote:
You make it sound like they're organizing the brown shirts to go burn down the poor independent miniatures company.

1) Games Workshop refers to their games as "The Games Workshop Hobby." (fascists advocate a single-party system)
2) Games Workshop actively denounces contrary opinions to their policies. (There was an article in White Dwarf complaining about and belittling commentary about their company on the internet. I can't find the link but that article was discussed on this site.) (fascists attempt to suppress open critique of their policies.)
3) Games Workshop has expressed on multiple occasions how they intend their products to be used. (http://www.dakkadakka.com/dakkaforum/posts/list/269279.page) (fascists seek tight constraints on the activities of consumers)
4) Games Workshop opposes natural competition that would be legal in a capitalist economy. (http://www.dakkadakka.com/dakkaforum/posts/list/269800.page)

reds8n wrote: I think perhaps that analogies of GW to ..to... I can't even bring myself to finish typing that sentence.

ah well..

@ fascist analogies before page 4 though.. I win that bet !

I would suggest that comparisons of Gw and the myriad of atrocaties carried out by real world totalitarian regimes is .. a tad OTT and perhaps best avoided for the continuance of the thread.

Anyway, must get back to polishing my jackboots...

aka_mythos wrote:Being annoyed at GW's heavy handed uncapitalistic behavior is one thing. Calling them facists and nazis... I don't even know how we got here.

Bookwrack wrote: "Don't forget your your gasmasks for when the fishes teargas you!"

"I think you meant, 'facists' dear."

We have received a response to our IP and copyright questions from one of the lawyers and I thought I would post these now and then update the article later with the second set of responses. It has been suggested that I add this qualifier to the article.

Intellectual property law is complicated, and is slightly different in every country on earth. TGN is not an attorney. Nothing on this page should be construed as legal advice. This information should not be relied on without consulting an attorney licensed to practice in your jurisdiction. The attorneys who contributed to this article are experienced intellectual property attorneys, but are only familiar with the laws of the jurisdictions in which they are licensed.

This firs set of responses are from Attorney A. As both of the lawyers involved deal professionally in this issue they have asked to post their responses anonymously.

Attorney A has experience litigating intellectual property cases in the United States District Courts, under the laws of the United States. He has represented large and small corporations and individual clients in cases involving copyright, patent, and trademark infringements, unfair competition, and other intellectual property disputes.

Due to the worldwide nature of the internet, what country/international laws on IP should be taken into consideration in cases where a company serves a Cease and Desist notice to someone in another country? Is this different if a person gets sued?

Attorney A: The short answer to these questions is, “It depends.” The Internet has thrust IP law into the cutting edge on many issues, not the least of which is jurisdictional. A country’s IP laws govern intellectual property within that country. If a person in the United Kingdom sends a letter to a person in the United States demanding that they cease and desist certain infringing behavior, it is probable that the UK-based sender is relying on UK law. However, that UK company may have US affiliates, or even US registered Trademarks. Anyone who receives an actual cease and desist letter should immediately contact an attorney. The letter may be clear about the laws on which its sender is relying, or it may not. As a general rule, you can assume the laws of your own country and those of the sender’s are fair game. In addition, remember that by posting things on the internet, it is reasonable for you to assume that people will view and copy your content in every jurisdiction on earth.

What can be considered derivative of an IP? Are there any guidelines or the matter is subjective?

Attorney A: The answer to this question requires a brief explanation of “IP.” It is clear to me from reading posts on TGN and other forums, that gamers have varying levels of understanding about the various flavors of intellectual property. Under US law, IP takes several forms, including Trade Secrets, Copyright, Trademark/Trade Dress, and Patent. Briefly: Copyright is the right an author has in the expression of original ideas in a tangible medium. Copyright exists with the author the moment he creates. Copyrights may be registered to establish a certain date of creation and to protect certain damages claims, but registration does not create a copyright. Trademark is an indication of origin. Trademark law differs significantly from copyright law, and can be quite technical. Trademarks can be registered with the government to establish certain elements of their strength,including their use in trade, the region in which they are used, and the range of products for which they hold secondary meaning.

Patents are a form of protection obtained from the government. Only certain novel creations may be patented, and only after a complex review process by the US Patent and Trademark Office. Finally, there are trade secrets, which are the secrets held by creators for business purposes, such as the formula for Coca-Cola or the colonel’s secret blend of herbs and spices. Many businesses rely on their own security (including non-disclosure agreements) to maintain their trade secrets, because they can keep them protected longer than the life of a patent.

Now, to answer the question: “Derivative” is part of a legal term of art used in copyright law. See 17 U.S.C sec. 101 (”A “derivative work” is a work based on one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, consensation, or any other form in which a work may be recast, transformed, or adapted.) The creator of a derivative work owns the copyright to the derivative work. However, the owner of a copyright in the original work from which the derivative was created still owns that copyright, and has the right to stop infringement of that right, including the creation of derivative works. Examples of gaming-related derivative works include: a fan-created space marine chapter, a Darth Vader character card for Heroscape, or a terrain piece made using bits from Games Workshop model kits.

The question in most lawsuits is not whether a secondary work is a derivative work, but whether it is an infringement not otherwise protected by the doctrine of “fair use,” which is determined by application of a four-factor test set out in 17 U.S.C. sec.107. Under that statute, the court will consider:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

There are scores of court cases examining these factors, and the opinions are as varied as the men and women who wrote them. See, e.g., Gaylord v. U.S., 85 Fed. Cl. 59 (Fed. Cl. 2008) (US Postage stamp depicting plaintiff’s sculpture ruled a fair use). In short, yes, the answer is somewhat subjective, and based on a balancing of these factors.

May I use trademarks (such as “Warhammer” or “Blood Bowl”) in the domain of a fan website as long as I have the appropriate disclaimers? Does the profit or non-profit status of the site change this?

Attorney A: The safest answer to this question is “No.” Using a registered trademark in your internet domain name is a sure-fire way to draw attention from the owner of the mark. The disclaimers are not the issue. Imagine, for example, that you opened a hotel named the “Holiday Inn,” and you printed a disclaimer on the inside of the hotel room doors that read: “This hotel is not affiliated with “Holiday Inns Inc.” Guess what. People would come to your hotel, buy a room, and may never notice the disclaimer. Even if they did, they would have already paid for their room. You would be trading on the goodwill of “Holiday Inns Inc.” to get people into your hotel. That is exactly what trademarks are for. They represent the goodwill of your business.

An internet domain name is very similar. I know to expect a certain level of quality from the “Games Workshop” trademark. If I were searching for GW products online, I would naturally use the Games Workshop name in my searches. If those searches pointed me to a website with that trademark in its name, I’d be likely to think it belonged to, was sanctioned by, or is affiliated with, Games Workshop. Without any effort at building goodwill at all, the owner of the infringing domain name would have instant traffic based solely on the GW name. This is traffic that GW itself would want, and, would likely have a good legal argument that it was entitled to.

I say that “no” is the safe answer because the issue of whether Trademarks can be used in domain names such as “www.<inserttrademarkhere>sucks.com without being infringement is rather hotly debated in US legal circles. For example, use of “sucks” after a trademark (known as ‘cybergriping’), has been permitted by U.S. Courts because there is no likely confusion that the trademark holder is the source of the “____sucks” website. See, e.g., Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.29 1161, 1165 n.2 (C.D.Ca. 1998); Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003). However, in another case, the use of “my” and another person’s trademark (as in mymcdonalds.com or mygamesworkshop.com) was held to be an infringement because of the likelihood of confusion. Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir 2004). Using “talk,” as in”talkbloodbowl.com” seems to me more likely to cause confusion than “sucks” because a reasonable person might conclude the owner of the Blood Bowl trademark is affiliated with the domain.

The fact that a site is not making any profit will not necessarily stop it from being considered an infringement of a legally protected trademark. Injunctive relief (meaning the forced shutdown of the site) can still be granted without any showing of economic harm. However, the fact that the site is making no profit WILL most certainly be relevant to the amount of damages that could be recovered by the trademark holder in any legal action. Regardless of the profits, a clever trademark holder will still argue that traffic and eyeballs are a valuable commodity online, and that the allegedly infringing website is taking eyeballs and traffic away from legitimate owner-controlled sites.

However, regulation of domain names brings US courts dangerously close to the First Amendment of the U.S. Constitution, which protects the freedom of speech. In addition, trademarks CAN lawfully be used in non-commercial speech, accurate comparative advertising in commerce, and new reporting or commentary. The protection of a trademark is not the words themselves, but the attachment of those words as a symbol of the origin of goods or services. See, e.g. Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931, 933 (D.C. 1985) (use of “Star Wars” to refer to US strategic defense initiative not a trademark infringement).

May I depict photos of miniatures from another manufacturer if I own the copyrights to the paint job and the photo itself? The sculpture is still the copyright of its manufacturer so is it a violation to use such photos?

Attorney A: You are correct that a fan-created photo of a painted miniature is a derivative work. The sculptor owns the copyright in the figure. The painter owns the copyright in the paintjob. The photographer owns the copyright in the photograph. The photo is a derivative work of both the sculpture and the paintjob. It IS a violation of the miniature manufacturer’s copyright in the miniature itself to distribute the photographs. See, e.g., Rogers v. Koons, 960 F.2d 301 (2d Cir 1992) (sculpture based on a photograph held to be violative of photographer’s copyright because the sculpture diluted the photographer’s market in potential derivative works).

The solution to this problem is to seek a license from the miniature manufacturer. It has been said that GW do not like to give such a license to competing rules designers. Future War Commander, for example, uses pictures of figures from several manufacturers, under license. It’s author has noted that GW would not permit him to use pictures of GW figures in his rulebook. He was right not to do so.

Are there any inexpensive (or free) channels that people can take if they do wish to contest some or all of the terms of the Cease & Desist letter?

Attorney A: Yes, but they are not without risk. If you get a cease and desist letter (”C&D”), you should consult an attorney. This stuff is complicated, and, odds are, the attorney who wrote the letter did enough homework to know he or she has a reasonable chance of success if pressed to file suit against you to stop the behavior complained of.

Remember, a C&D is a letter. It’s a scary letter, but, like a letter from your mom, it’s just a letter. It represents the opinion of the person or company who sent it. The lawyers who write them are paid to advocate for their client. The goal of the letter is to stop you from doing what they believe is an infringement. They may be absolutely right. They may be shooting in the dark, hoping you will just stop what you are doing because it’s close to infringement. You won’t know how serious they are unless you test them.

However, most of us reading this site are hobbyists. This is a discussion of our hobby. The people mailing out C&D letters are in business. If you are planning to defend a hobby website against a business, you need to really think about whether it’s worth it. I have had hundreds of clients proclaim they will see a case through to the end because of the “principal of the thing,” only to cringe at the first small legal fee bill. If you won’t put up a few hundred dollars to defend your “principals” then maybe you should just give up before the lawsuits get filed.

At any rate, the first thing you should do if you think you are not infringing, is simply to respond to the letter with a letter that politely and directly explains why you will not stop, and why their letter is wrong. You should also immediately call the author of the letter and offer to discuss it with them in detail, in the hopes of reaching a written resolution of your differences. They don’t want to waste tens of thousands of dollars suing you any more than you want to go broke defending their lawsuit. However, once they have filed suit, settlement discussions will be far less favorable to you, as they will have sunk a good bit of money into their legal fees. Again, I’d get a lawyer to handle this, even if only to proofread or give you a second opinion. You are swimming with sharks if you are acting on your own against experienced corporate IP attorneys. You wouldn’t fight a professional boxer, would you?

Can a company be aware of a fan site for years and later attempt to get them to change their name or domain because of trademark infringement? Does the fact that people at the company other than the legal team are aware of the site change this?

Attorney A: Trademark infringement claims can be barred by what is called the doctrine of laches. If a holder of a mark sleeps on his rights and knowingly permits an infringing use, the court will likely weigh that fact in favor of his opponent. These are, of course, legal arguments to be made after expensive discovery and during trial. The argument is rarely a slam dunk, as it requires the court to consider and weigh a variety of factors after hearing evidence.

The awareness of employees of a corporation can be imputed to the corporation itself, but only under certain circumstances, and only through certain employees. It is a factual determination. As a general rule, the knowledge of a few store employees for a corporation running an international chain of stores is not likely to be imputed to the corporation itself. However, if the officers and directors were aware, then the corporation will likely be held to be aware. Again, this is something that would require extensive discovery and depositions to prove, and “smoking gun” emails are rarer than movies and TV shows might suggest.

Can a company license its trademarks for use in fan sites? Can it do so for free?

Attorney A: Yes. The owner of a trademark can license it’s trademark on whatever terms it wants. It’s just like any other piece of property. I can loan you my car for free, or I can charge you for it. Just don’t steal my car.

What makes one model legally distinct from one GW produces? Can GW attempt to stop the sale of a figure that looks like one of their miniatures?

Attorney A: GW can attempt to stop an infringement of their copyright. The question of whether a new miniature infringes on GW’s copyright by being sufficiently similar to be considered an infringement would require the opinions of experts in miniature sculpting, or sculpture in general. The experts would have to opine about the distinctive and original characteristics of the two miniatures, and conclude whether the later produced one is in fact a copy of the GW miniature, or sufficiently original to constitute its own non-infringing design. There is, for example, a reported decision about the subtle differences in action figure designs which details the competing expert testimony about the figures musculature and posing.

See Mattel, Inc. v. Azrak Hamway Int’l, Inc., 724 F.2d 357 (2nd Cir. 1983) (Mattel sought to hold Azrak liable for trademark infringement because defendant’s figures resembled its Masters of the Universe figures, which, it argued, had a particular posture and musculature that the public immediately associated with the Masters of the Universe. The defendant even used the Masters of the Universe logo in its sales to compare its product to Mattel’s. Mattel lost, and the defendant’s use was permitted. ). A lawsuit between GW and a competing figure manufacturer would have to be resolved through similar testimony.

Does the complainant have the right to demand information such as “what profit have you made” and “who have you been dealing with”?

Attorney A: The author of a letter can demand whatever they want. It never hurts to ask. The recipient does not have to respond. (Again, it’s a letter.)

However, if the author of the letter files a Complaint in court, they can serve written discovery requests on the defendant. Those requests will certainly include these questions, and the Court will almost certainly direct the defendant to answer them unless he can interpose sustainable objections. The answers to those questions go to the issue of damages recoverable in a trademark infringement suit. If the defendant is profiting from his illegal use of the plaintiff’s trademark, the Court can order the Defendant to disgorge all ill-gotten profits and return them to the Plaintiff.

How far would a disclaimer on your website assist you if faced with a C&D notice? If the disclaimer clearly states that you are in no way affiliated with the company, and no infringement on the rights of that company are being made does that help?

Attorney A: A disclaimer is not a silver bullet in almost any context. If it is clearly worded, prominent,and in line with what you are actually doing on your site, it may very well succeed in limiting damages recoverable from you in a successful lawsuit. It will not stop a lawsuit (or a C&D) however.

Can a company legally decide that you are not allowed to do a review of their product?

Attorney A: No. Criticism is a permissible use of copyrightable material under the doctrine of “Fair Use.” Likewise, you may use someone else’s trademark in a purely descriptive context. These two provisions should protect a good faith and honest product review.

Can I make figures for use with GW games legally? Or can GW stop a company from making figures that are “for use with” one of their products?

Attorney A: This question goes to the heart of most hobby-related IP issues. It should be legally possible for someone to manufacture miniatures “for use with” the Games Workshop-brand tabletop miniatures wargame “Warhammer 40,000″. It would have to be done very carefully, however. The Mattel case, cited above, is particularly instructive, as is a case about a board game expansion for use with TrivialPursuit, called Selchow & Righter v. Decipher, Inc., 598 F.Supp. 1489 (E.D. Va. 1984). In each case, the Courts carefully examined a second manufacturer’s marketing and sales of products designed to be comparable to the original (In Mattel), or “for use with” the original (In Selchow & Righter). Both courts explain the factors involved, and note that it is a very thin line between profiting off of the work of another in fair competition and advancement of ideas, artistic expression, etc., and doing so illegally. If you intend to start a line of products in this way, you would be well advised to consult with an attorney before investing a bunch of money that may well be used for legal fees.

To which extent are game rules protected by copyright?

Attorney A: A TGN reader recently posted this link to an article from the US Copyright office: http://www.copyright.gov/fls/fl108.html.

It explains that the mechanics, method, and ideas behind a game are not copyrightable (though they can be the subject of a patent). However, as the article notes, “Copyright protects only the particular manner of an author’s expression in literary, artistic, or musical form. ” So, if a game has a particularly innovative initiative mechanic, and you like that mechanic, it is not a copyright violation use the concept in your own game as long as you don’t literally copy the explanation of the mechanic from the rulebook. It is worth noting that game mechanics can be patented, but it is fairly rare, and typically reserved for novel physical game components, such as Looney Labs’ Icehouse pieces, or the Navia Dratp pieces with the compass that flips over to reveal different abilities. Patents can be easily searched through the US Patent and Trademark Office’s website: www.uspto.gov.

Fair use is a US law term. Is there an international standard for “Fair Use”?

Attorney A: I am familiar with US fair use law, but not with the laws of other nations. I know that the US is a signatory of the Berne Convention (as are dozens of other nations), and understand that some countries, such as France, rely on a system of “Droits Morale” which is different. The Berne Convention requires signatories to offer the same protections to the works of other signatories’ citizens as they would to their own. Again, you need to consult an attorney in your home jurisdiction if you have questions about local laws.

Fearspect wrote:Gosh, imagine if someone copyrighted the idea of painting a bowl of fruit. .

Fearspect wrote:Like the idea of a very large man in very heavy armour?