I'm really suprised with how this whole story has progressed. I guess I always expected GW to have a fleet of untouchable lawyers that could never be bested in combat. While its still in the early goings its looking more like GW's case was built on the hope that the fear of trial would be enough to get CH to fold. I'm glad CH got some big guns of there own to do some pro bono work as I like the idea of this case being settled based on the laws in question and not settled due to the total costs

Before this many people had said as much, that GW relied more on its size and weight to bully its notions of the law on to others who couldn't afford to fight GW's assertions. Whether their is or isn't enough for this to go in their favor, it really shows how much of GW's claims are bark and not bite.

Kroothawk wrote:. . .citing the rulebook as a technical manual . . .

I almost died choking on my coffee reading that.

Can I sue?

(I think I did ruin my mouse pad)

Did they play RAI instead of RAW?

Kroothawk wrote:BTW here another comment by weeble1000:

While I respect weeble1000 for posting these updates, I think his analysis in this latest post is a little off.

My suspicion is that you can refer to discrete parts of a work in certain instances, as prior rulings and treatises on copyright law have stated a requirement to specify which part of which works have been infringed, but you are still running into the problem of medium. A drawing is different from a sculpture, and both are different from a story. If you draw a picture and call it a Tervigon, and I design a sculpture that is very similar to the drawing and call it a Tervigon, my impression from the precedent I am aware of is that these would be considered different works and that the sculpture does not infringe the drawing. The labeling of the works is also irrelevant.

See Rogers v. Koons, a nice case that is directly on point. Sculptures can infringe a drawing. See also the AWCPA.

If you drew a "Tervigon" and I drew a "Tervigon" that was very similar, one could argue that my drawing is a distinct work. Almost any difference is significant, and all I have to do to create an original work is to have contributed more than a "mere trivial" variation. As Chapterhouse argued in its motion to dismiss, "Even if it were assumed, for the sake of argument, that Chapterhouse Studios’s products were “inspired by” Plaintiff’s alleged works, inspiration is not infringement."

Now, to the extent that the idea of the "Tervigon" is itself unique, this might raise the standard for what is considered a "mere trivial" variation a slight bit as opposed to a drawing of a very common object like flowers or a skull. However, ideas are not protectable. Only expressions of ideas are protectable. This means that the concept of a "Tervigon" is entirely unprotectable, but a drawing of a "Tervigon" is protectable. Even so, my drawing of a "Tervigon" is also protectable so long as I have made a meaningful variation.

I own the Chapter House "Alien Spawning Queen" conversion kit.

To the extent that it has to join to the GW Carnifex(tm) kit, it is similar to the illustration in the Tyranid book, as it has the six spiracle vents on top of the carapace. It has half vents which join to the corresponding half of the Carnifex vents.

Whether that is enough to condemn it I have no idea. That is why we have courts, etc.


Automatically Appended Next Post:

ironicsilence wrote:I'm really suprised with how this whole story has progressed. I guess I always expected GW to have a fleet of untouchable lawyers that could never be bested in combat. While its still in the early goings its looking more like GW's case was built on the hope that the fear of trial would be enough to get CH to fold. I'm glad CH got some big guns of there own to do some pro bono work as I like the idea of this case being settled based on the laws in question and not settled due to the total costs

Many of the older observers of the wargames scene have been surprised for decades that GW has never been challenged on its claimed copyrights, many of which would seem to be built on very shaky ground.

It has always been assumed that a small company would have no stomach to fight the £100 Million+ GW in court in order to establish that the IoM Aquila, for example, is not an original work. Consequently, no-one would find it worthwhile to challenge GW in court for a lot of the stuff they claim.

GW have used this effect in reverse to squash fan sites. I don't know to what extent they have squashed small companies producing add-ons and conversions.

Their move against Chapter House has gone off track because Chapter House obtained significantly expert pro bono legal help, and don't need to worry about money. It seems that many of GW's copyright claims are genuinely weak, as they are unable to state them clearly in the filings.

If ultimately things go badly for GW, it will be because they have been hoist by their own petard.

I don't know what legal effect that would have on after market conversion sellers.

biccat,

Roger vs Koons isn't exactly what I would call "directly on point." Koons admitted to intentionally copying the photograph, but claimed fair use as a parody. The court did find that the average person would recognize the copying, but ultimately we're talking about a work of art that copied that which made the Plaintiff's work a unique artistic expression. The meaning was copied, and there was direct evidence of that.

It does demonstrate that a protectable work can be copied in another medium, but the circumstances are very particular in that the sculpture was specifically designed to copy the postcard in terms of design, layout, etc. "In his "production notes" Koons stressed that he wanted "Puppies" copied faithfully in the sculpture. For example, he told his artisans the "work must be just like photo — features of photo must be captured;" later, "puppies need detail in fur. Details — Just Like Photo!;" other notes instruct the artisans to "keep man in angle of photo — mild lean to side & mildly forward — same for woman," to "keep woman's big smile," and to "keep [the sculpture] very, very realistic;" others state, "Girl's nose is too small. Please make larger as per photo;" another reminds the artisans that "The puppies must have variation in fur as per photo — not just large area of paint — variation as per photo." (emphasis supplied)."

Further, the copying was identified through a two-dimensional image of the sculpture: "A friend of Scanlon's, who was familiar with the photograph, called to tell him that what she took to be a "colorized" version of "Puppies" was on the front page of the calendar section of the May 7, 1989 Sunday Los Angeles Times. In fact, as she and Scanlon later learned, the newspaper actually depicted Koons' "String of Puppies" in connection with an article about its exhibition at the Los Angeles Museum of Contemporary Art."

"Puppies" was found to be original due to the artistic creation in composing the photograph:

"Elements of originality in a photograph may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved. See Burrow Giles, 111 U.S. at 60, 4 S.Ct. at 282. 1 Nimmer, § 2.08[E][1]. To the extent that these factors are involved, "Puppies" is the product of plaintiff's artistic creation. Rogers' inventive efforts in posing the group for the photograph, taking the picture, and printing "Puppies" suffices to meet the original work of art criteria. Thus, in terms of his unique expression of the subject matter captured in the photograph, plaintiff has established valid ownership of a copyright in an original work of art."

Koons's "String of Puppies" was found to copy that which constituted the artistic creation inherent in a photograph. Additionally, summary judgement was particularly easy given that there was direct evidence of copying:

"Here, the trial court found original elements of creative expression in the copyrighted work were copied and that the copying was so blatantly apparent as not to require a trial. We agree that no reasonable juror could find that copying did not occur in this case. First, this case presents the rare scenario where there is direct evidence of copying. Koons admittedly gave a copy of the photograph to the Italian artisans with the explicit instruction that the work be copied. Moreover, the importance of copying the very details of the photograph that embodied plaintiff's original contribution -the poses, the shading, the expressions- was stressed by Koons throughout the creation of the sculpture. His instructions invariably implored that the creation must be designed "as per photo." This undisputed direct evidence of copying is sufficient to support the district court's granting of summary judgment."

"We recognize that ideas, concepts, and the like found in the common domain are the inheritance of everyone. What is protected is the original or unique way that an author expresses those ideas, concepts, principles or processes. Hence, in looking at these two works of art to determine whether they are substantially similar, focus must be on the similarity of the expression of an idea or fact, not on the similarity of the facts, ideas or concepts themselves. See Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 912 (2d Cir. 1980). It is not therefore the idea of a couple with eight small puppies seated on a bench that is protected, but rather Roger's expression of this idea — as caught in the placement, in the particular light, and in the expressions of the subjects — that gives the photograph its charming and unique character, that is to say, makes it original and copyrightable."

"Because of Koons' extensive use of the same expression of the idea that Rogers' created, it was properly held that he "copied" the protected features of the original. No genuine issue of material fact exists with respect to this finding; "String of Puppies" was copied from the photograph "Puppies" based either on the direct evidence of copying or on proof of access and substantial similarity. In light of this summary judgment was properly granted on this issue."

You will see here that the issue was that which is of particular artistic value in a photograph. Composition was clearly considered to be of paramount importance, as well as the expressions of the subjects, etc.. "String of Puppies" was found to have copied those aspects of the original work, and significantly, there was direct evidence in support of this. Although the image was rendered into a different medium, in this case a three-dimensional sculpture, it copied almost everything that gave the photograph meaning and was even designed to be viewed from the same angle as the photograph.

This is a very, very particular case of infringement across mediums and it demonstrates that "substantial similarity" is limited to the expression, not the idea. Koons went out of his way to copy the expression as faithfully as possible. In my example of a Tervigon eating a Space Marine and a Tervigon destroying a building, the expression is different. If Koons's sculpture had the two people drowning the puppies and the sculpture was called "Drowning Puppies," there would have been no finding of infringement, even if the the puppies, the people, and the bench had all been designed to represent the same people, puppies, and objects in the original photograph. If the "Drowning Puppies" sculpture had the people with mad faces looking down at the slowly dying puppies, I could likely create a sculpture with the people smiling and looking at the viewer in a cheerful manner while drowning the puppies and call it a unique artistic expression. The change in attitude is not only an aesthetic change, but it would significantly alter the meaning and impact of the work. I doubt very much that the "ordinary observer" would think that the two were the same.

An expression of a Tervigon eating a Space Marine does not allow you to copyright the idea of a Tervigon, and just because the two images have a very similar alien beast in them doesn't mean that one is copied from the other.

Let's look at another example. What if you had a drawing of a Tervigon eating a Space Marine and I had a drawing of a Tervigon ice skating? Would you then argue that one copies the other? If you feel that the two images are different on the basis that a Tervigon wouldn't be ice skating, you're considering the idea of what a Tervigon is, and not comparing the two expressions. A Tervigon destroying a building is not necessarily less distinct from a picture of a Tervigon eating a Space Marine than is a picture of a Tervigon ice skating.

As to derivative works, you're still talking about something based on a protectable copyright, which is limited to the specific artistic expression. A derivative work must recast, transform, or adapt the underlying copyright. You could argue that a picture of a Tervigon on ice is adapted from a picture of a Tervigon eating a Space Marine. However, you must first consider that a picture is not one of the examples cited in the statute. This necessarily means that you must now prove to the Court that the accused work is "recast, transformed, or adapted from" the copyrighted work, and you would likely need the guidance of precedent. I don't think you'll find that a picture of a similar subject matter can be accused of being a derivative work. If I took your picture of a Tervigon eating a Space Marine and changed the Space Marine to a bag of potato chips (or crisps even), you could argue that I "transformed" the underlying copyright by replacing the marine with chips even though you wouldn't be able to say that the two drawings were entirely the same. In this sense, the original work is taken as is and then altered. This is an explicit requirement in order for a work to be derivative.

Now I want a Tervigon model eating a Space Marine (of course with the Chapterhouse conversion kit and a GW Space Marine )

BTW welcome weeble1000 to actively posting on Dakka , maybe I don't have to quote your posts on other forums from now on.

Kroothawk wrote:Now I want a Tervigon model eating a Space Marine (of course with the Chapterhouse conversion kit and a GW Space Marine )

BTW welcome weeble1000 to actively posting on Dakka , maybe I don't have to quote your posts on other forums from now on.

I'll do my best to keep track of things here, but it seems that all my time wasting forum reading has become GW v Chapterhouse related these days. I barely have time left to ogle sweet IG scratch builds and Ork conversions.

Just quickly popping my head up to clarify a point raised on UK copyright law that I didn't see addressed concretely, apologies if it has and I missed it.

In the UK, you automatically own copyright on any IP etc you create. Registering your copyrights and trademarks makes it a LOT easier to have the legal system back you up in a dispute, but if you can prove to a court's satisfaction (or alternatively, convince the other guy that you can prove to a court's satisfaction) that you were doing it first you're sorted.

And, for the sake of completeness, GW employees (at least, when I was a redshirt) sign a contract giving over all IP they create on work time to GW.

lindsay40k wrote:Just quickly popping my head up to clarify a point raised on UK copyright law that I didn't see addressed concretely, apologies if it has and I missed it.

In the UK, you automatically own copyright on any IP etc you create. Registering your copyrights and trademarks makes it a LOT easier to have the legal system back you up in a dispute, but if you can prove to a court's satisfaction (or alternatively, convince the other guy that you can prove to a court's satisfaction) that you were doing it first you're sorted.

And, for the sake of completeness, GW employees (at least, when I was a redshirt) sign a contract giving over all IP they create on work time to GW.

It raises an interesting point. GW is a UK based company first, so is this case going to use American Copyright laws or UK?
I remember studying some bits at college and well English law is vairing in many places compared to Scottish law, for example.
Which country is this being decided in? Could make all the difference in the long run.

Thanks for showing up, I appreciate the feedback.

weeble1000 wrote:biccat,

Roger vs Koons isn't exactly what I would call "directly on point." Koons admitted to intentionally copying the photograph, but claimed fair use as a parody. The court did find that the average person would recognize the copying, but ultimately we're talking about a work of art that copied that which made the Plaintiff's work a unique artistic expression. The meaning was copied, and there was direct evidence of that.

I struggled with the 'directly on point.' But for the part I quoted (2d-3d work) it's on point. So what the heck.

weeble1000 wrote:It does demonstrate that a protectable work can be copied in another medium, but the circumstances are very particular in that the sculpture was specifically designed to copy the postcard in terms of design, layout, etc. "In his "production notes" Koons stressed that he wanted "Puppies" copied faithfully in the sculpture.

I think it is clear that CH wanted to capture the design/layout of the Tervigon. Specifically, with reference to the drawing in the 'nid codex.

weeble1000 wrote:Koons's "String of Puppies" was found to copy that which constituted the artistic creation inherent in a photograph.

Except remember, it's not the idea of the posed puppies that was copyrighted, it was the specific expression. Hypothetically, a photograph taken from behind the puppies would not directly infringe.

weeble1000 wrote:You will see here that the issue was that which is of particular artistic value in a photograph. Composition was clearly considered to be of paramount importance, as well as the expressions of the subjects, etc.. "String of Puppies" was found to have copied those aspects of the original work, and significantly, there was direct evidence in support of this. Although the image was rendered into a different medium, in this case a three-dimensional sculpture, it copied almost everything that gave the photograph meaning and was even designed to be viewed from the same angle as the photograph.

Which I think parallels well with the GW case. CH took the image GW provided and made a copy.

weeble1000 wrote:In my example of a Tervigon eating a Space Marine and a Tervigon destroying a building, the expression is different.

I see what you're saying. But in Koons, the puppies weren't a unique form. The image of a puppy is quite clearly in the public domain. In the case of GW, the Tervigon image isn't public domain, it's a copyrighted work.

(Trademark aside) I can't copy Superman and put him in a different story (say, northern California) and claim that I'm not infringing the trademark. Superman is the expression.

weeble1000 wrote:An expression of a Tervigon eating a Space Marine does not allow you to copyright the idea of a Tervigon, and just because the two images have a very similar alien beast in them doesn't mean that one is copied from the other.

But when the appearance of the alien beast is the artistic expression, it doesn't matter what the environment is, you're still using the work.

weeble1000 wrote:Let's look at another example. What if you had a drawing of a Tervigon eating a Space Marine and I had a drawing of a Tervigon ice skating? Would you then argue that one copies the other?

Yes, because in both cases you're using the same expression: a Tervigon. Now, if you're arguing that the Tervigon image isn't protected, that's an entirely different position.

weeble1000 wrote:As to derivative works, you're still talking about something based on a protectable copyright, which is limited to the specific artistic expression. A derivative work must recast, transform, or adapt the underlying copyright. You could argue that a picture of a Tervigon on ice is adapted from a picture of a Tervigon eating a Space Marine. However, you must first consider that a picture is not one of the examples cited in the statute. This necessarily means that you must now prove to the Court that the accused work is "recast, transformed, or adapted from" the copyrighted work, and you would likely need the guidance of precedent. I don't think you'll find that a picture of a similar subject matter can be accused of being a derivative work. If I took your picture of a Tervigon eating a Space Marine and changed the Space Marine to a bag of potato chips (or crisps even), you could argue that I "transformed" the underlying copyright by replacing the marine with chips even though you wouldn't be able to say that the two drawings were entirely the same. In this sense, the original work is taken as is and then altered. This is an explicit requirement in order for a work to be derivative.

The original design for the Tervigon was (arguably) altered. CH took a 2D representation and expanded it into a third dimension.

biccat wrote:
I think it is clear that CH wanted to capture the design/layout of the Tervigon. Specifically, with reference to the drawing in the 'nid codex.

Of the Tervigon concept, or a specific protectable work? Even Games Workshop has failed to point to a specific work that has been infringed by the accused conversion kit. Koons admitted to attempting to copy the photograph. There was direct evidence and it wasn't in dispute. The dispute was over whether his work was original because of what he added to the composition and the alteration in artistic meaning. He also argued for protection as a parody.

When you place the accused conversion kit side by side with -whatever- specific work Games Workshop eventually accuses it of infringing, will evidence of copying meet the ordinary observer standard? I don't think it will. More specifically, I don't think Judge Kennelly will believe that a reasonable jury could find that it is a copy. The conversion kit is ripe for summary judgement.

Biccat, I think you're missing the point. If an expression of an idea is all that is protectable, a different expression is equally protectable if there is more than a marginal difference. What you've misinterpreted from Koons is that composition is indeed important. If the composition is altered, it's more than a marginal difference and the works are arguably not significantly similar. If you draw a Tervigon from the rear, and I draw it from the front, the composition is different, as you've pointed out with respect to the sculpture. Anything about a Tervigon that's not expressed isn't protectable and a work can only directly infringe a protectable work if it is "substantially similar." The Tervigon, divorced of the context of whichever expressions it is depicted in is just a concept.

If Games Workshop has 1,000 images of Tervigons, each expression must individually be asserted against the accused work in order for it to be infringed. Moreover, if Games Workshop knows that 1,000 expressions have been infringed, it owes a duty of fair notice to the Defendant to specify each one. Any that are not specified cannot be part of the suit and referring to them generally doesn't cut it as far as fair notice is concerned.

Do you see how this works? As far as copyrights are concerned, each and every work is a unique expression that has absolutely no relationship to any other expression except in the case of a derivative work. But, as I pointed out, a work is only derivative if it transforms, recasts, or is adapted from the specific work on which it is based. Derivative works are necessary to preserve, as the statute point out, translations of a novel. If there was no derivative work statute, words in a different language would constitute a unique expression.

It's time for Dark Heresy, so I'll address the rest of your post tomorrow.

weeble1000 wrote:Biccat, I think you're missing the point. If an expression of an idea is all that is protectable, a different expression is equally protectable if there is more than a marginal difference. What you've misinterpreted from Koons is that composition is indeed important. If the composition is altered, it's more than a marginal difference and the works are arguably not significantly similar. If you draw a Tervigon from the rear, and I draw it from the front, the composition is different, as you've pointed out with respect to the sculpture. Anything about a Tervigon that's not expressed isn't protectable and a work can only directly infringe a protectable work if it is "substantially similar." The Tervigon, divorced of the context of whichever expressions it is depicted in is just a concept.

You keep confusing "protectable" with "non-infringing."

Your drawing of a Tervigon might be a protectable expression, but that doesn't mean it doesn't infringe someone else's copyright.

Also, your idea that only the specific embodiment of a character/image is protected is directly at odds with existing law about characters. For example, Superman is a copyrighted "concept" in the same manner that the Tervigon is copyrighted. You can't draw Superman in a new environment and eating ice cream without infringing the copyright on the character. There is even case law on the idea of entirely written (novelized) characters enjoying some measure of copyright protection.

I can't wait to hear what Janthkin has makes of this. Him and Polonius are the only two I actually listen to in threads like this.

The strangest thing is I've not met many GW employees who even realise there ARE other companies out there, even in their head office. I've used models from heartbreaker, Harlequin (now Black Tree), Gamezone etc in their stores and simply because the staff know not to try to hard sell me I've been playing 20+ years they don't question is it a GW mini.
Personally I remember 20th century fox tapping GW on the shoulder and them VERY quickly changing a certain tyranid sculpt. Would love to see them defend their chaos character who was doomed never to die and serve the chaos gods and imagary of the 8 pointed star, use of orcs, elves in the tolkien/D&D style etc. Rick Priestly even stated in an interview people came up to him, pointed out similarities with certain things to say for example a range of fantasy books by Michael Moorcock and he always replied yeah thats where the ideas came from.
I'm hoping that chapterhouse pull through but certain lines were edging on GW trying something like this. To be safe think I might get an order in quick.

I don't think GW will see this as competition. Best example of this is a GW staff member at head office stating GW has no competition, and hence the prices are set to keep rising instead of falling. You'd think with the way the economy has went they'd use some sense. Instead they'll probably up the prices to get the money back from the 10 year olds' parents from what they spent in the law suit. Sad fact, Video gaming is now much, much cheaper overall

Alpha
With the legal posse on the thread I risk goofing here but I assumed that as the trial is going to be held in the USA, American juristiction will be used.

That was iirc GW's decision

Not so much GWs decision as a necessity. Chapterhouse is an American company, they can be ordered not to sell things in the UK by UK courts, but unless they actually go there other decisions can't really be enforced. A US court can enforce the law, since they can get US cops to throw them in jail for contempt if CH doesn't comply.

Biccat,

This is from a 2006 article published in the Vanderbilt Journal of Entertainment and Technology Law:

"The issue of separate protection for literary characters arises
when the character is removed from the original work, so that the
character leads a new and independent life in a separately written
piece. Characters that are capable of leading independent lives are
those who are especially memorable, such that they stay in a reader’s
imagination long after the original storyline is forgotten. An author
seeking to write a new adventure for Superman, Tarzan, or Sherlock
Holmes, must be aware of the legal considerations involved. When the
character is separated from his original copyrighted work, the
determination of the legal protection to which the character itself is
entitled is difficult to determine."

"It is clear that there is a need to strike a balance between
giving authors enough incentive to create remarkable characters and
leaving enough raw materials in the public domain upon which
authors can build. Courts have tried to formulate tests for determining when a character deserves independent copyright
protection that keep in mind the need for balancing, but much
uncertainty still exists regarding the protection of literary characters."

"Literary characters are especially hard to protect because they
have a “tangible existence only in the specific words, pictures, and
sounds created by [their] author.”14"

"The “distinctly delineated” test rests on the principle that the
more developed a character is, the more it embodies protectable
expression and less a general idea...Only if the
character is sufficiently developed so that it constitutes more than just
an idea, and therefore is worthy of copyright protection, should one
move on to the next step."

"Perhaps, because of the lack of guidance, courts have begun
overprotecting characters by considering only whether they are
copyrightable, and not whether there has been actual infringement.
By considering whether a character is sufficiently delineated to
receive copyright protection, and then automatically finding
infringement without comparing the two works to determine whether
one is substantially similar to the other, these courts seem to
concentrate exclusively on the first part of the Nichols test."

"As explained above, the tests for determining protection of
literary characters under copyright law are confusing, difficult to
apply, and often yield unpredictable results. The difficult application
of the “distinctly delineated” and “story being told” tests has led legal
scholars to examine alternate grounds for offering protection to
literary characters. Trademark and unfair competition are the
primary alternatives to copyright suggested by scholars.78"


Before you start telling me that I'm confusing things, you might want to do a little research, Biccat. Superman is not a protected "concept." Copyright law specifically prohibits the protection of concepts:

Copyright Act 1973 102(b) - In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. (emphasis added)

Superman, like other well-defined characters such as Tarzan and Sherlock Holmes, has been considered protectable because, by the "distinctly delineated" test, they are considered protectable works in and of themselves instead of mere concepts. "The “distinctly delineated” test rests on the principle that the more developed a character is, the more it embodies protectable expression and less a general idea"

Are you saying that the Tervigon is as "distinctly delineated" as Superman, Tarzan, and Sherlock Holmes? Even if it were, such tests are confusing, difficult to perform, often misleading, and a poor way to protect literary characters. As the above author suggests, a fairer and more proper way to protect literary characters is a combination of copyright and trademark law already extant.

And further, Biccat, if a work infringes a copyright, it is not itself protectable. If a work is found to be a copy of a protectable work, it cannot be considered anything other than a copy of the work which it was found to be a copy of. It is therefore not original. If it were original, it would not be a copy. I will entertain the notion that I could be wrong about this, but If you are going to maintain that I am wrong, I'd like to see some evidence of that. Do you know of any relevant precedent? Can you point to scholarly discourse on the subject? I simply can't see how a copy of something can be considered to be a unique work of authorship in and of itself distinct from that which it is a copy of.

Modifications of infringing work are both infringing and protected (IE, DC can't publish a Superman fanfic without the writers permission).

Also, why all this focus on copyright law? Merchandizing rights are done via trademark law.

Ketara wrote:I can't wait to hear what Janthkin has makes of this. Him and Polonius are the only two I actually listen to in threads like this.

This seems to me, pardon me for saying so, a rather peculiar appeal to authority. I don't think you should conflate the fact they have legal backgrounds with the fact they are necessarily right: After all, both GWS and CHS have lawyers giving them completely opposing opinions on how they are sure to win, and there is 100% certainty one side is going to be wrong and lose (unless they settle).

weeble1000 wrote:...
Superman is not a protected "concept." Copyright law specifically prohibits the protection of concepts:

Copyright Act 1973 102(b) - In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. (emphasis added)

I just wanted to expand on this, and point out how this can all become confusing to lay people because of the 3 distinct types of Intellectual Property in the US;

-Copyright, which protects expressions (the individual fixations of concepts),

-Patent, which protects inventions (which includes things like a "procedure, process, system, method of operation"),

-Trademark, which are intended to identify origin in trade (the easiest way to think about it is the mark on a bag of flour, intended to identify which mill it comes from).

It's important to understand that no form of IP in the US can protect a pure idea or discovery, although patent law can come close (for example, the scientific principles that explain how to transmute lead into gold could not be patented, but you could conceivably have a patent that covered all practical ways of using that discovery, subject to drafting issues).

Beyond that, it should be understood that one reason for litigation is because in IP, we often don't know what we really have until it's tested in court.

For example, consider the words "Space Marine";

Games Workshop lists this as one of the terms that are "either (R), TM and/or (c)" of GW. But what does that really mean?

As its Wiki page demonstrates, the concept of a space marine predates GWs use of the term by decades. Beyond that, the term "marine" is almost purely descriptive (see Merriam-Webster, "2: one of a class of soldiers serving on shipboard or in close association with a naval force"). That's a problem for trademark purposes: you cannot trademark purely descriptive marks, as it could potentially become something close to the forbidden protection of an idea. Imagine, for example, someone attempting to trademark the term "athletic shoe".

So, why does GW list something that realistically could never be asserted on its IP listing? Well, because it gives them an excuse/compulsion to brush back people that might intrude on their territory, as it were. If someone asserts a registered mark against you, you have to undergo process, and as we see in this particular case, that process needs lawyers, and lawyers need money.

Put another way, try and imagine a circumstance where you would expect GW to assert their TM on "Space Marine" against a company that has some money. For example, Blizzard Entertainment, whose Marines were at least sometimes referred to as "Terran Space Marine mk 2"?

This is no idle thought: Blizzard does, after all, make a table top miniatures game for World of Warcraft, it's not such a stretch to imagine them branching into the area with StarCraft. Suppose that they do: can anyone here really imagine GW asserting their TM on Space Marines against Activision/Blizzard?*

Requia wrote:Modifications of infringing work are both infringing and protected (IE, DC can't publish a Superman fanfic without the writers permission).

Also, why all this focus on copyright law? Merchandizing rights are done via trademark law.

GW's motivation seems to be a general concept that no-one is allowed to make anything for 40K except them.

This cannot be asserted by trademarks, so it is being asserted by copyright.

I believe there are some trademark complaints involved too, however Chapter House stopped using any GW trademarks last year.

I just wanted to expand on this, and point out how this can all become confusing to lay people because of the 3 distinct types of Intellectual Property in the US;

-Copyright, which protects expressions (the individual fixations of concepts),

-Patent, which protects inventions (which includes things like a "procedure, process, system, method of operation"),

-Trademark, which are intended to identify origin in trade (the easiest way to think about it is the mark on a bag of flour, intended to identify which mill it comes from).

It's important to understand that no form of IP in the US can protect a pure idea or discovery, although patent law can come close (for example, the scientific principles that explain how to transmute lead into gold could not be patented, but you could conceivably have a patent that covered all practical ways of using that discovery, subject to drafting issues).

Beyond that, it should be understood that one reason for litigation is because in IP, we often don't know what we really have until it's tested in court.

For example, consider the words "Space Marine";

Games Workshop lists this as one of the terms that are "either (R), TM and/or (c)" of GW. But what does that really mean?

As its Wiki page demonstrates, the concept of a space marine predates GWs use of the term by decades. Beyond that, the term "marine" is almost purely descriptive (see Merriam-Webster, "2: one of a class of soldiers serving on shipboard or in close association with a naval force"). That's a problem for trademark purposes: you cannot trademark purely descriptive marks, as it could potentially become something close to the forbidden protection of an idea. Imagine, for example, someone attempting to trademark the term "athletic shoe".

So, why does GW list something that realistically could never be asserted on its IP listing? Well, because it gives them an excuse/compulsion to brush back people that might intrude on their territory, as it were. If someone asserts a registered mark against you, you have to undergo process, and as we see in this particular case, that process needs lawyers, and lawyers need money.

Put another way, try and imagine a circumstance where you would expect GW to assert their TM on "Space Marine" against a company that has some money. For example, Blizzard Entertainment, whose Marines were at least sometimes referred to as "Terran Space Marine mk 2"?

This is no idle thought: Blizzard does, after all, make a table top miniatures game for World of Warcraft, it's not such a stretch to imagine them branching into the area with StarCraft. Suppose that they do: can anyone here really imagine GW asserting their TM on Space Marines against Activision/Blizzard?*

Really nicely explained post. I know as much about cricket as I do about IP law.
Thanks

Buzzsaw wrote:I just wanted to expand on this, and point out how this can all become confusing to lay people because of the 3 distinct types of Intellectual Property in the US;

Just a quick note, to point out that there are (at least) 4 categories of IP law - Trade Secret belongs in there, too. But that's pretty tangential.

For example, consider the words "Space Marine";

Games Workshop lists this as one of the terms that are "either (R), TM and/or (c)" of GW. But what does that really mean?

As its Wiki page demonstrates, the concept of a space marine predates GWs use of the term by decades. Beyond that, the term "marine" is almost purely descriptive (see Merriam-Webster, "2: one of a class of soldiers serving on shipboard or in close association with a naval force"). That's a problem for trademark purposes: you cannot trademark purely descriptive marks, as it could potentially become something close to the forbidden protection of an idea. Imagine, for example, someone attempting to trademark the term "athletic shoe".

So, why does GW list something that realistically could never be asserted on its IP listing? Well, because it gives them an excuse/compulsion to brush back people that might intrude on their territory, as it were. If someone asserts a registered mark against you, you have to undergo process, and as we see in this particular case, that process needs lawyers, and lawyers need money.

One of the perils of theoretical discussion versus a real-world scenario - the pesky facts sometimes get in the way.

GW HAS a registered trademark for "Space Marine," in the class of goods including "board games, parlor games, war games, hobby games, toy models and miniatures of buildings, scenery, figures, automobiles, vehicles, planes, trains and card games and paint, sold therewith" (No. 74186534). Moreover, they've had that mark since 1993. At this stage, it is incontestable. In practice, trying to argue the validity of the "Space Marine" trademark is a losing battle.

Blizzard wouldn't touch it; not only did Starcraft come out WAY later than GW filed their original trademark (and much later still, since the mark was first used in commerce), odds are pretty good that there are still old contracts lying around from the pre-Warcraft days, when Blizzard & GW were considering doing business. It's common to include promises not to attack the validity of IP in such contracts, and common to have those terms survive the end of the contract.

Intrerestingly enough, GW would be compelled to respond if Blizzard made a Starcraft board game, and included "Space Marines." Undefended trademarks are a no-no. But I expect Blizzard would simply call them "Terran Marines," as is more common in the game & surrounding fluff.

Ketara wrote:I can't wait to hear what Janthkin has makes of this. Him and Polonius are the only two I actually listen to in threads like this.

Heh. Janthkin is frantically painting Skaven - he has to fly to Adepticon in about 32 hours.

As weeble & biccat have shown, there is room for reasonable disagreement on some of the underlying issues - there isn't an exact parallel. Myself, I'm actually less interested in the "can a sculpture infringe the copyright of a picture" question, and more interested in the "does GW's implicit license for owners to modify their 'sculptures' via conversion rise to a level where another company can create & market products intended to create derivative works of those sculptures" question.

I think the "amended" complaint is still defective, but this isn't exactly uncommon - it's not unusual for complaints to be amended multiple times, until the presiding judge is satisfied. I don't see this case being dismissed (with prejudice) anytime soon.

Ouze wrote:

Ketara wrote:I can't wait to hear what Janthkin has makes of this. Him and Polonius are the only two I actually listen to in threads like this.

This seems to me, pardon me for saying so, a rather peculiar appeal to authority. I don't think you should conflate the fact they have legal backgrounds with the fact they are necessarily right: After all, both GWS and CHS have lawyers giving them completely opposing opinions on how they are sure to win, and there is 100% certainty one side is going to be wrong and lose (unless they settle).

Aye, that is true, but considering one is a lawyer who makes his living on IP, and the other is a lawyer who readily admits when he might be wrong or mistaken on a point, I'll gladly take their opinions above those of unknown internet armchair expert #24. If Janthkin was no good at this, he wouldn't be able to put food on the table, so I'm pretty certain he must have a better idea of how the law works in these circumstances than most bods. Plus, unlike the legal counsel involved who pretty much HAVE to stick by their clients, Janthkin is under no such obligation, and can say what he freely and truly thinks of the affair.

Janthkin wrote:Heh. Janthkin is frantically painting Skaven - he has to fly to Adepticon in about 32 hours.

Ouch. How much have you got left to do?

weeble1000 wrote:This is from a 2006 article published in the Vanderbilt Journal of Entertainment and Technology Law

I'm familiar with the article, in fact. It's one of the references I cited when I covered the subject (image copyrights vs sculptures) in my thesis during law school. But the "character copyright" concept is an attempt to extend protection to a character who is moved out of his (or her) literary environment.

For example, a story about Huck Finn fighting aliens on a spaceship is taking him out of his literary environment.

A story about Huck Finn sailing down the Missouri river is substantially similar to the environment he originated in.

weeble1000 wrote:Before you start telling me that I'm confusing things, you might want to do a little research, Biccat. Superman is not a protected "concept." Copyright law specifically prohibits the protection of concepts:

Copyright Act 1973 102(b) - In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. (emphasis added)

I have done research. But you're applying too broad a definition to "concept." World-eating aliens are an unprotectable concept. Photographs of bridges are an unprotectable concept. But a Tervigon as shown in the GW illustration, or a specific bridge in a photograph, are protectable expressions of that concept.

weeble1000 wrote:Superman, like other well-defined characters such as Tarzan and Sherlock Holmes, has been considered protectable because, by the "distinctly delineated" test, they are considered protectable works in and of themselves instead of mere concepts. "The “distinctly delineated” test rests on the principle that the more developed a character is, the more it embodies protectable expression and less a general idea"

Distinctly deliniated characters are protected under copyrights.

weeble1000 wrote:Are you saying that the Tervigon is as "distinctly delineated" as Superman, Tarzan, and Sherlock Holmes? Even if it were, such tests are confusing, difficult to perform, often misleading, and a poor way to protect literary characters. As the above author suggests, a fairer and more proper way to protect literary characters is a combination of copyright and trademark law already extant.

No, not at all. But I do think that the Tervigon image contains protectable elements.

weeble1000 wrote:And further, Biccat, if a work infringes a copyright, it is not itself protectable. If a work is found to be a copy of a protectable work, it cannot be considered anything other than a copy of the work which it was found to be a copy of. It is therefore not original. If it were original, it would not be a copy. I will entertain the notion that I could be wrong about this, but If you are going to maintain that I am wrong, I'd like to see some evidence of that. Do you know of any relevant precedent? Can you point to scholarly discourse on the subject? I simply can't see how a copy of something can be considered to be a unique work of authorship in and of itself distinct from that which it is a copy of.

Sure. Here's a great example:

Suppose I propose to create a compilation of already existing works according to some formula. For example, it might be "Best works by contemporary authors." There is some effort of original expression in choosing which works I'm going to include. This compilation is protectable, although the original elements are not protectable. If I make my compilation without permission from one of the authors, then it's infringing. But that doesn't affect protection, the original expressive elements are still protected.

There can exist some copyrighted elements in a work that also incorporates other copyrighted works. Infringement and originality are not mutually exclusive.

-----------------

Lets imagine a hypothetical. I create a comic-book about a superhero, his appearance doesn't matter, but lets say he is entirely, 100% original. No derivation from any other works. But I only show his left side.

You decide that you want to copy the hero, and create a live-action film starring the hero doing what he does best (fightin' bad guys and kickin' butt!). In the movie, you incorporate every detail that I've ever drawn, only in real-life, showing all sides, and everyone knows exactly who the hero is supposed to be. But it's titled "Generic Hero Movie."

Would you say that this movie infringes a copyright in the original comic book? The impression I'm getting from you is that this would not infringe, and I don't think that squares with copyright law.

Janthkin wrote:GW HAS a registered trademark for "Space Marine," in the class of goods including "board games, parlor games, war games, hobby games, toy models and miniatures of buildings, scenery, figures, automobiles, vehicles, planes, trains and card games and paint, sold therewith" (No. 74186534). Moreover, they've had that mark since 1993. At this stage, it is incontestable. In practice, trying to argue the validity of the "Space Marine" trademark is a losing battle.

A registered trademark just means they filed extra paperwork with the government that allows them to get a higher amount of statutory damages if an infringment occurs. When a company claims a Trademark or registers one, the government only cares if anyone else has registered it, but just like a patent that doesn't gurantee that issuance is correct. Companies lose patents and trademarks often enough when someone comes in and shows the court of the common use or existing use within bounds of the claimed protection. The term Space Marine existed before 40k. The term "Space Marine" appeared in books and games before GW's use. The long list someone could generate given enough research would make GW's claim shaky and could invalidate their claimed TM.

It is interesting seeing all of the legal professionals chiming in. Although some foundation with the speakers' various backgrounds woud also be enlightening. While I am an attorney and feel somewhat comfortable discussing general legal matters, I know next to nothing about IP, and always considered it to be kind of a dry topic. Who knew it could be so interesting? Of course applying a topic that you know something about already to a set of laws always makes the law more interesting.

Space Marine, like many other terms in the gaming industry that have been argued over (like Army Builder) just seem so generic to me that it baffles the mind that they're in fact protected terms under law, or if they aren't that someone's lawyer has been able to convince a company that they are. I'm curious about the Superhero case now, because it again seems like such a generic term. I can understand specific "Superheroes" being protected, but not such a generic descriptor.

@ biccat - I never said that distinctly delineated characters are not protectable under copyrights. I argued that the Tervigon does not rise to the level of distinctly deliniated and that the test itself is inherently problematic and disputed. Ergo, your comparison with the distinctly delineated character "Superman" was not helpful and somewhat misleading.

I also disagree with your interpretation of "out of literary environment." I believe out of literary environment constitutes out of the expressions in which the character is described, such that the character has "a life of its own" independent of the works in which it appears and thus survives in the minds of readers long after the particulars of the story are forgotten.

The literary environment that the character is in is not relevant if the character is independently protectable. The test is to determine if the charcter is independently protectable and then compare the presentation of the alleged character in the accused work and determine if it satisfies the "substantial similarity" test as to the character, not the story the character is in. I feel that this is an essential concept in the protection of literary characters independently of the works in which they appear.

A story could infringe The Adventures of Huckleberry Finn even if the character of Huck Finn was not independently protectable. The story itself could be copied in terms of plot, narrative structure, etc. even if it used entirely different words and different characters. That said, if an accused story involved Huck Finn traveling down the Missouri River but was not "substantially similar" to The Adventures of Huckleberry Finn, which is entirely possible, in order for the character of Huck Finn to be infringed independently of the work as a whole, the character would have to be "distinctly delineated" and thus independently protectable.

Literary environment is therefore limited to the specific works in which the character appears which are protectable in their entirety, Huck Finn included.

And if you're not saying that the Tervigon is a "distinctly delineated" character, the use of distinctly delineated characters as an example of a copyrightable concept is not only flawed, but additionally irrelevant.

I also think the Tervigon image contains protectable elements insofar as each expression is taken as a whole and compared in its entirety to the entirety of any accused works. Of course it goes without saying that only those elements of the allegedly copyrighted images that are protectable are relevant.

Finally, your example of a compilation requires that it is possible to parse the work into discrete elements drawn from multiple copyrighted works. Insofar as this is true, I agree that the work can both infringe and be protectable. However, it is important to remember that not all works can so easily be parsed down in this manner.

weeble1000 wrote:And if you're not saying that the Tervigon is a "distinctly delineated" character, the use of distinctly delineated characters as an example of a copyrightable concept is not only flawed, but additionally irrelevant.

I agree that it's irrelevant. I didn't raise that point.

I said that Superman is a copyrighted work because of the artistic expression involved in creating him. His likeness, his outfit, and his unique "S" makes him protectable, whether fighting crime or enjoying a sundae in Sacramento.

weeble1000 wrote:I also think the Tervigon image contains protectable elements insofar as each expression is taken as a whole and compared in its entirety to the entirety of any accused works. Of course it goes without saying that only those elements of the allegedly copyrighted images that are protectable are relevant.

Yup, totally agree. The test will be: would an ordinary person think the two are substantially similar such that the only way CH got it's model was copying GW's IP?

This is not a good place for CH to be, IMO.

weeble1000 wrote:Finally, your example of a compilation requires that it is possible to parse the work into discrete elements drawn from multiple copyrighted works. Insofar as this is true, I agree that the work can both infringe and be protectable. However, it is important to remember that not all works can so easily be parsed down in this manner.

I agree, which is part of what makes this case interesting. The idea of a sculptor copying an image in the manner done by CH (assuming they did copy it) is fairly unique, and I'm very interested in this aspect of the case.

My point in responding to your post on page 10 was to point out that this case isn't completely open-and-shut like you made it out to be (specifically: "If you draw a picture and call it a Tervigon, and I design a sculpture that is very similar to the drawing and call it a Tervigon, my impression from the precedent I am aware of is that these would be considered different works and that the sculpture does not infringe the drawing").

There are some really interesting aspects of copyright law at play here, and if GW will get their together, we can find out some interesting things about how the law protects drawings against infringement by sculptors.

For some reason I thought the case was to get a preliminary hearing today, (30th March), is/did it?

Andrew

aka_mythos wrote:A registered trademark just means they filed extra paperwork with the government that allows them to get a higher amount of statutory damages if an infringment occurs. When a company claims a Trademark or registers one, the government only cares if anyone else has registered it, but just like a patent that doesn't gurantee that issuance is correct. Companies lose patents and trademarks often enough when someone comes in and shows the court of the common use or existing use within bounds of the claimed protection. The term Space Marine existed before 40k. The term "Space Marine" appeared in books and games before GW's use. The long list someone could generate given enough research would make GW's claim shaky and could invalidate their claimed TM.

Yes, and no. You need to understand what an incontestable trademark is. Generally speaking, no claims that an incontestable trademark is invalid will be entertained by the court. It doesn't matter that "Space Marine" has been used as a phrase before. In the context of board games, parlor games, war games, & etc., "Space Marine" is an incontestable trademark belonging to GW; absent a showing of abandonment, fraud in obtaining the mark, or it becoming generic, there is no challenging the validity of the mark.

AndrewC wrote:For some reason I thought the case was to get a preliminary hearing today, (30th March), is/did it?

Andrew

I believe a pre-hearing status conference was scheduled for the two lead attorneys to appear before the judge. I doubt we will find anything out for a couple of days, if at all.

Eldanar, thanks I was beginning to think I was imagining things!

Cheers

Andrew

Central US time is six or eight hours behind the UK so the working day is still young at the time of this posting (4:34 p.m. British Summer Time).

I love that I'm getting a pro bono legal education here. Keep it up!

Tantras wrote:I love that I'm getting a pro bono legal education here. Keep it up!

Ooops.

Mandatory disclaimer: while I am an attorney, I am not your (generic "you") attorney. All my comments in this thread are my opinion only, and should not be taken as legal advice. If you need legal advice, seek out an attorney to represent you.

Am still giggling at keeping up the pro bono

apologies for lowering the tone.

Janthkin wrote:

Tantras wrote:I love that I'm getting a pro bono legal education here. Keep it up!

Ooops.

Mandatory disclaimer: while I am an attorney, I am not your (generic "you") attorney. All my comments in this thread are my opinion only, and should not be taken as legal advice. If you need legal advice, seek out an attorney to represent you.

+1.

Discussions as to the state of the law are not legal opinions and should not be construed as such. This information may not be accurate and/or your situation may be different from that being discussed in this thread. If you have a specific legal issue, you should consult with an attorney.

I think Tantras was making a knob joke. No need for lawyer small print.

notprop wrote:I think Tantras was making a knob joke. No need for lawyer small print.

Don't tell them that! They'll sue for... something...

Continue, gentlemen!

Janthkin wrote:

Buzzsaw wrote:I just wanted to expand on this, and point out how this can all become confusing to lay people because of the 3 distinct types of Intellectual Property in the US;

Just a quick note, to point out that there are (at least) 4 categories of IP law - Trade Secret belongs in there, too. But that's pretty tangential.

Eeeeeeeeh... to be honest, I think including things like trade secret in a general discussion of IP just makes things more obscure, not less. There are so many differences (not least of which is that trade secrets are primarily state, not federal), and so many types of idiosyncratic IP exists at the state level (image rights, for example, vary wildly in protection).

Janthkin wrote:One of the perils of theoretical discussion versus a real-world scenario - the pesky facts sometimes get in the way.

GW HAS a registered trademark for "Space Marine," in the class of goods including "board games, parlor games, war games, hobby games, toy models and miniatures of buildings, scenery, figures, automobiles, vehicles, planes, trains and card games and paint, sold therewith" (No. 74186534). Moreover, they've had that mark since 1993. At this stage, it is incontestable. In practice, trying to argue the validity of the "Space Marine" trademark is a losing battle.
...

Intrerestingly enough, GW would be compelled to respond if Blizzard made a Starcraft board game, and included "Space Marines." Undefended trademarks are a no-no. But I expect Blizzard would simply call them "Terran Marines," as is more common in the game & surrounding fluff.

Heh, and one of the perils of discussing law is that nothing comes down to "yes" or "no", but always "it depends...", but I digress.

I don't want to get too deep into the weeds, so I'll just point out that while what you say is very true, I would quibble with the emphasis, that is, that it's not so cut and dry as you seem to be suggesting. I don't want to get too off topic though, so I will concede your point.

As a practical matter, it occurred to me that the greatest strength of the "Space Marine" mark is actually how generic and, in a word, bland, it is. It's a bit like calling your action figure "Army Soldier" or "Action Hero" etc; it's a term that would be used in description, rather then designation.

But I think I'm now undermining my attempt to clarify things, so I'll step back and wait for more updates about the actual case, as opposed to the hypothetical one.

Janthkin wrote:Yes, and no. You need to understand what an incontestable trademark is. Generally speaking, no claims that an incontestable trademark is invalid will be entertained by the court. It doesn't matter that "Space Marine" has been used as a phrase before. In the context of board games, parlor games, war games, & etc., "Space Marine" is an incontestable trademark belonging to GW; absent a showing of abandonment, fraud in obtaining the mark, or it becoming generic, there is no challenging the validity of the mark.

I was trying to say it was a generic term before it was issued and only more so now. The arguement that it was an improperly granted TM by virtue of it having been generic at the time is a valid one. A court can cancel a trademark as it sees fit and the erroneous granting of a TM is more than good enough grounds to do so. So while GW has a TM on Space Marines, it has little strength.

The strength of trademarks are oftened weighed by the nature of the name. Rangeing from coined, arbitrary, suggestive, and descriptive in relative strength of claim. Coined are made up words; arbitrary are prexisting words that have no context to the nature of the company or product; suggestive imply relationships between company, product, and use; and descriptive words put together to explain what something is. Descriptive is one step shy of being generic and Space Marines, independent of the context of its past and present outside use, is just that, descriptive. With that context however it would not be difficult to assert that its generic.

So maybe GW should just TM "Adeptus Astartes" and use that instead.

Tantras wrote:

notprop wrote:I think Tantras was making a knob joke. No need for lawyer small print.

Don't tell them that! They'll sue for... something...

Continue, gentlemen!

Quite right, but I just want to point out that while I am a knob jokist, I am not your knob jokist. All my comments in this thread are my opinion only, and should not be taken as knob advice. If you need knob advice, seek out an doctor to look at you.

I trust that this is clear.

Like the man said continue.....

Janthkin wrote:

Tantras wrote:I love that I'm getting a pro bono legal education here. Keep it up!

Ooops.

Mandatory disclaimer: while I am an attorney, I am not your (generic "you") attorney. All my comments in this thread are my opinion only, and should not be taken as legal advice. If you need legal advice, seek out an attorney to represent you.

You know... Dakka does have sig lines. ; )


Eric

MagickalMemories wrote:

Janthkin wrote:

Tantras wrote:I love that I'm getting a pro bono legal education here. Keep it up!

Ooops.

Mandatory disclaimer: while I am an attorney, I am not your (generic "you") attorney. All my comments in this thread are my opinion only, and should not be taken as legal advice. If you need legal advice, seek out an attorney to represent you.

You know... Dakka does have sig lines. ; )

Yes, but it's only threads like this one that require any disclaimer.

Yeah but it makes you sound clever the rest of the time.
People are more reluctant to argue with a chap with some legalese erudition in the sig.

This I can personally testify to.

aka_mythos wrote:

Janthkin wrote:Yes, and no. You need to understand what an incontestable trademark is. Generally speaking, no claims that an incontestable trademark is invalid will be entertained by the court. It doesn't matter that "Space Marine" has been used as a phrase before. In the context of board games, parlor games, war games, & etc., "Space Marine" is an incontestable trademark belonging to GW; absent a showing of abandonment, fraud in obtaining the mark, or it becoming generic, there is no challenging the validity of the mark.

I was trying to say it was a generic term before it was issued and only more so now. The arguement that it was an improperly granted TM by virtue of it having been generic at the time is a valid one. A court can cancel a trademark as it sees fit and the erroneous granting of a TM is more than good enough grounds to do so. So while GW has a TM on Space Marines, it has little strength.

The strength of trademarks are oftened weighed by the nature of the name. Rangeing from coined, arbitrary, suggestive, and descriptive in relative strength of claim. Coined are made up words; arbitrary are prexisting words that have no context to the nature of the company or product; suggestive imply relationships between company, product, and use; and descriptive words put together to explain what something is. Descriptive is one step shy of being generic and Space Marines, independent of the context of its past and present outside use, is just that, descriptive. With that context however it would not be difficult to assert that its generic.

If the "Space Marine" trademark was applied to actual warriors or soldiers who served in space, it would be descriptive.

Here, though, we're talking about miniature plastic & pewter models. And trademarks are all about context - see "Apple," the fruit, the record label, and the technology company.

Suffice it to say, I think the trademark is actually a pretty good one, particularly given all of the secondary meaning it has acquired within its field of use.

The Northern District of Illinois has a procedural rule that every motion submitted to the Court must be presented in person within a few days. That is the hearing scheduled for today. Most Courts in the US don't require in person presentment like this.

"PLEASE TAKE NOTICE that on March 30, 2011 at 9:30 a.m., we shall appear before
the Hon. Matthew F. Kennelly, Courtroom 2103, United States District Court, 219 South
Dearborn Street, Chicago, Illinois 60604 and shall then and there present DEFENDANT
CHAPTERHOUSE STUDIOS’ RENEWED RULE 12(b)(6) MOTION TO DISMISS
PLAINTIFF’S COPYRIGHT CLAIMS. "

@ biccat - Yes, you did present Superman as an example of a protectable concept and liken it to the Tervigon.

biccat wrote:Also, your idea that only the specific embodiment of a character/image is protected is directly at odds with existing law about characters. For example, Superman is a copyrighted "concept" in the same manner that the Tervigon is copyrighted.

I'm saying that the comparison is both flawed and irrelevant, but you raised the point and I debated it. You also brought up the Rogers v Koons case and I debated that. I don't mind you backing away from it, but I think you should take ownership of what you've argued.

I never called this case open and shut. I think Chapterhouse have some very compelling arguments and I believe that if Games Workshop defines its claims properly we'll see a lot of summary judgement from Judge Kennelly. And I also don't believe that saying "my impression from the precedent that I am aware of" would lead one to think that I don't believe there is room for argument, dissenting opinion, various interpretations, or additional relevant information.

I think I'm being rather reasonable, stating my opinions clearly, identifying what information I am relying on, and making that information accessible to those with whom I am discussing this issue. I respect that we have a difference of opinion on this issue, but I think it would be more helpful in the long run if you take ownership of what you've argued and provide evidence to support it. I appreciate that you brought up the Koons case. I think that case is very interesting. However, I disagree with your interpretation of its application to the concept of allegations of copyright infringement across different mediums. I've explained my position and offered an alternative interpretation of the case, supported by a brief analysis of the Court's opinion.

You argued that the Tervigon is protectable in the same way that Superman is a protectable character. I disagreed with you and referenced a relevant article on the subject. So far you've just been stating opinions with no support. You've even mentioned that you've read and analyzed the article that I referenced. But then you corrected me without supporting your point other than by suggesting that you are an authority on the subject owing to the fact that you read the article and cited it in a thesis. I don't know where your thesis is, what it is titled, what is written in said thesis, or even that you wrote a thesis or graduated from law school. How did you cite the work in your thesis? What is your opinion about the author's arguments? How is my interpretation incorrect and upon what do you base that opinion?

If you don't provide evidence to support your opinions it is difficult to have a discussion. Neither of us can rely on the other's education, background, or expertise. But what we can do is explain how we have formed our opinions and thus have no need to be concerned with one another's knowledge and expertise or lack thereof.

Chibi Bodge-Battle wrote:Yeah but it makes you sound clever the rest of the time.
People are more reluctant to argue with a chap with some legalese erudition in the sig.

This I can personally testify to.

This is very true. It's your sig line that keeps me from ever arguing with you. ; )

Eric

weeble1000 wrote:@ biccat - Yes, you did present Superman as an example of a protectable concept and liken it to the Tervigon.

Here's a decent article on the subject (at least on a preliminary reading). See especially Walt Disney v. Air Pirates, a particularly important case on character copyrightability. The court distinguished between Mickey Mouse (an illustrated character) on one hand and Sam Spade (a literary character) on the other. Comic book characters, in short, can contain unique elements of expression apart from their unprotectable concept.

It is to this extent that the Tervigon is similar to the character of Superman, they both contain unique elements of expression separate from their character.

weeble1000 wrote:I'm saying that the comparison is both flawed and irrelevant, but you raised the point and I debated it. You also brought up the Rogers v Koons case and I debated that. I don't mind you backing away from it, but I think you should take ownership of what you've argued.

I cited Rogers v. Koons for the proposition that a sculpture can infringe a copyrighted image. I'm taking ownership of that. I'm not saying that Koons is dispositive, far from it, but rather that an image can be infringed by a sculptural work.

weeble1000 wrote:I never called this case open and shut.

No, but in my opinion you were dismissive of the idea that a sculpture could infringe a copyrighted image. Since the Tervigon is one of the central elements (and, AFAIK, CH isn't copying any of GW's currently-produced models), it seemed that you were suggesting the case was that easy.

weeble1000 wrote:I think Chapterhouse have some very compelling arguments and I believe that if Games Workshop defines its claims properly we'll see a lot of summary judgement from Judge Kennelly. And I also don't believe that saying "my impression from the precedent that I am aware of" would lead one to think that I don't believe there is room for argument, dissenting opinion, various interpretations, or additional relevant information.

I apologize if I misrepresented your position. I referenced Koons because I thought you would appreciate the new information (new precedent, although, not really since it's in the 2nd circuit, we'll call it persuasive).

weeble1000 wrote:I think I'm being rather reasonable, stating my opinions clearly, identifying what information I am relying on, and making that information accessible to those with whom I am discussing this issue.

I think you've been very helpful, and I enjoy your updates as well as your discussion on the point.

weeble1000 wrote:I respect that we have a difference of opinion on this issue, but I think it would be more helpful in the long run if you take ownership of what you've argued and provide evidence to support it. I appreciate that you brought up the Koons case. I think that case is very interesting. However, I disagree with your interpretation of its application to the concept of allegations of copyright infringement across different mediums. I've explained my position and offered an alternative interpretation of the case, supported by a brief analysis of the Court's opinion.

I wasn't sure what your alternative interpretation of the case was, unless it was that the defendant tried to copy the Puppies photograph. And on that front, I'm not sure how CH is much different.

weeble1000 wrote:You argued that the Tervigon is protectable in the same way that Superman is a protectable character. I disagreed with you and referenced a relevant article on the subject. So far you've just been stating opinions with no support.

Do you think the above case (Walt Disney v. Air Pirates) is helpful in supporting my point? I know we're writing for two different audiences here, but if you want a list of cases, I'd have to decline.

weeble1000 wrote:You've even mentioned that you've read and analyzed the article that I referenced. But then you corrected me without supporting your point other than by suggesting that you are an authority on the subject owing to the fact that you read the article and cited it in a thesis.

The article on the subject was about literary characters, not illustrations. There are substantial differences between the two (see Air Pirates), not the least of which is that a literary character (Sam Spade) doesn't include any expression separate from his character. Illustrations, in the case of Superman and the Tervigon, include expressive content, not merely an abstraction.

weeble1000 wrote:If you don't provide evidence to support your opinions it is difficult to have a discussion. Neither of us can rely on the other's education, background, or expertise. But what we can do is explain how we have formed our opinions and thus have no need to be concerned with one another's knowledge and expertise or lack thereof.

I simply mentioned my expertise as background information, not as an appeal to authority.

Anyway, I hope you find the case cited above interesting reading material. Please let me know if you disagree that it is helpful in understanding the issues at stake.

Finally, I'm sorry if I came off improperly, I really do think you've been mostly spot on, but simply disagreed slightly with your analysis. Also, your updates are an excellent distraction. Besides, we get paid to fight over this stuff, so why not have some fun with it?

I am the only one that thinks that "Walt Disney vs Air Pirates" sounds like the greatest movie/comic/game ever?

Yeah, that'd be pretty sweet.


Back on topic a little, I was talking to people about the developments here, and I have a theory on GW's angle.

Flat out stating that they don't have to/won't make specific claims of infringement means that they won't win the case.

It is possible that the GW lawyers already know that they aren't going to win this case. They aren't going to put Chapterhouse out of business with it either (since the lawyers are working pro-bono).

But they might want to keep the Bully Card to play again later. If Games Workshop were to bring forward art work for the court to examine and compare to CH minis, then they would risk setting a precedent in the future. Basically, if the court takes a good long look at what CH is doing, and rules that it is legal, GW won't be able to throw their weight around as much in the future.

If this is thrown out of court due to lack of specificity, then they might be able to avoid setting a court precedent for other companies like Chapterhouse.

If they can't win this case, they might just want to keep from losing the ability to threaten small companies into oblivion.

Could we leave the "who we want to win, dis the other lot stuff please?
The thread has been going along really well without such wranglings whereas the previous threads that had those arguments closed.
It may be trying to tell us something.

The thread has been excellent on the whole with some insightful contributions. It would be a shame if that were to be spoiled at this stage.
edit: iirc Raincity, the mods have issued statements on this thread that such comments will be given the mighty Foot of Gork treatment and it may be as well to modify your post
Thank you

"PLEASE TAKE NOTICE that on March 30, 2011 at 9:30 a.m., we shall appear before
the Hon. Matthew F. Kennelly, Courtroom 2103, United States District Court, 219 South
Dearborn Street, Chicago, Illinois 60604 and shall then and there present DEFENDANT
CHAPTERHOUSE STUDIOS’ RENEWED RULE 12(b)(6) MOTION TO DISMISS
PLAINTIFF’S COPYRIGHT CLAIMS. "

Sorry if I have missed something but may we assume this took place and is there any news please?

I can't really contribute anything on the legal discussion, I'm in St. Louis for two weeks of training and I'm pretty busy.

There's some interesting stuff here, I suppose. I think it's good for people to realize that GW doesn't necessarily have amazingly good lawyers: they simply have them. When you're the only one with the money to go to court, you don't need a great lawyer.




Automatically Appended Next Post:

raincity wrote:[Mod Edit - Rule breaking post by user 'raincity' deleted and had to be deleted here too.]

It's comments like this that frustrate me. I mean, I'm a lawyer, so I know I see the world differently than most. My job once required me to explain to a dead man's wife why he wasn't disabled due to back pain, even though he died of a narcotic pain reliever overdose. So, I don't get too tied up in the emotions of the matter.

That said, I'm not sure why people seem to think that CHS is doing anything that morally reprehensible.

Lorek wrote:

odinsgrandson wrote:By the way, it is likely that this topic will get out of hand, and eventually be locked. I understand that many people here have very strong feelings on this subject, so let's try and keep it civil for as long as we can.

This! Please keep it civil AND on-topic.

Just as a reminder, this discussion is has nothing to do with whether or not we as individuals like or dislike a particular party this is in, so lets just discuss the actual matter at hand here.

Janthkin wrote:If the "Space Marine" trademark was applied to actual warriors or soldiers who served in space, it would be descriptive.

Here, though, we're talking about miniature plastic & pewter models. And trademarks are all about context - see "Apple," the fruit, the record label, and the technology company.

Suffice it to say, I think the trademark is actually a pretty good one, particularly given all of the secondary meaning it has acquired within its field of use.

Apple is regarded as an "arbitrary" TM'ed name. Space Marine is descriptive of the feature and character that distinguishing those miniatures from non-space "marine" miniatures; but that the same distinction is applicable to many other miniatures and existed in tabletop games before 40k. To make the assertion that GW has a strong claim to that TM, you have to believe there wasn't a common use in the area of gaming before hand and that its use in those ways has not continued today. Characters from Aliens, Gears of War, Starship Troopers, and Halo are all instances where they've been refered to as space marines; those characters have appeared across many media and are only the ones that immediately come to mind; some pre-existed before other have continued that traditional use. They all used other terminology as well, but the term space marine is applied to describe those militant characters. It was in common use then and it still is now. They didn't TM it till 1993, almost 7 years after their creation. Let's put it another way, what is the entymology of GW's "Space Marines?"-Its "space marine," not "space" and "marine." GW didn't take two separate words together to make a name, they took an established description.

GW took what was used as traditional description of a particular sci-fi archetype, capitalized it and treated it as a proper noun, that is the extent of what GW's done with creating that "name."

Polonius wrote:
There's some interesting stuff here, I suppose. I think it's good for people to realize that GW doesn't necessarily have amazingly good lawyers: they simply have them. When you're the only one with the money to go to court, you don't need a great lawyer.

I'd like to say here that Foley and Lardner is a very good law firm with qualified, talented attorneys. I don't know any of the Foley Attorneys representing Games Workshop personally, but I've disparaged Games Workshop's representation a bit, and I don't want anyone to think that my comments are intended to reflect on the law firm as a whole. I'm also getting the impression that Mr. Moskin isn't that involved in the GW v Chapterhouse lawsuit. Personally, I don't even think he read the first amended complaint before it was submitted to the Court. There also might have been a little hiccup from the loss of Heidi Belongia, as she was primarily handling the case on the Chicago end until she left Foley and Lardner.

I do think you make a good point Polonius that money does't always equal the best attorneys, and hiring an expensive law firm doesn't guarantee that you are going to get the best attorney in the world. However, I do believe Games Workshop hired Foley and Lardner because it is a high caliber firm that has a strong name in IP litigation.

There's nothing new on the docket, but I'll try to find out what happened at the hearing yesterday.

@biccat - Thank you very much for your response. I very much appreciate your reasonable reaction and I apologize if I mistook your tone or meaning. I'll take a look at the documents you've mentioned when I've got some time. I have a report to get out ASAP, although the case already settled. It's hard to find motivation to write up a report on research for a case that isn't going to court, but it needs to get done.

aka_mythos wrote:

Janthkin wrote:If the "Space Marine" trademark was applied to actual warriors or soldiers who served in space, it would be descriptive.

Here, though, we're talking about miniature plastic & pewter models. And trademarks are all about context - see "Apple," the fruit, the record label, and the technology company.

Suffice it to say, I think the trademark is actually a pretty good one, particularly given all of the secondary meaning it has acquired within its field of use.

Apple is regarded as an "arbitrary" TM'ed name. Space Marine is descriptive of the feature and character that distinguishing those miniatures from non-space "marine" miniatures; but that the same distinction is applicable to many other miniatures and existed in tabletop games before 40k. To make the assertion that GW has a strong claim to that TM, you have to believe there wasn't a common use in the area of gaming before hand and that its use in those ways has not continued today. Characters from Aliens, Gears of War, Starship Troopers, and Halo are all instances where they've been refered to as space marines; those characters have appeared across many media and are only the ones that immediately come to mind; some pre-existed before other have continued that traditional use. They all used other terminology as well, but the term space marine is applied to describe those militant characters. It was in common use then and it still is now. They didn't TM it till 1993, almost 7 years after their creation. Let's put it another way, what is the entymology of GW's "Space Marines?"-Its "space marine," not "space" and "marine." GW didn't take two separate words together to make a name, they took an established description.

GW took what was used as traditional description of a particular sci-fi archetype, capitalized it and treated it as a proper noun, that is the extent of what GW's done with creating that "name."

I believe Heinlein may have got the drop on GW for "space marine" by a considerable period. Like 60 odd years.

odinsgrandson wrote:Yeah, that'd be pretty sweet.
It is possible that the GW lawyers already know that they aren't going to win this case. They aren't going to put Chapterhouse out of business with it either (since the lawyers are working pro-bono).

But they might want to keep the Bully Card to play again later. If Games Workshop were to bring forward art work for the court to examine and compare to CH minis, then they would risk setting a precedent in the future. Basically, if the court takes a good long look at what CH is doing, and rules that it is legal, GW won't be able to throw their weight around as much in the future.

If this is thrown out of court due to lack of specificity, then they might be able to avoid setting a court precedent for other companies like Chapterhouse.

If they can't win this case, they might just want to keep from losing the ability to threaten small companies into oblivion.

That is an interesting point. However, GW might be walking a tight rope with this one. And this kind of goes back to speculation as to why the defense firm took the case. One of the potential reasons is they want to create a precedent. So either the defense could file some sort of counter claims to force GW to stay in the suit and presumably then get a verdict on the merits; or, they might be interested in representing future defendants in similar situations.

I think GW has to get some sort of win on the merits - on something. Otherwise, it just looks like a paper tiger, and we'll see 3d party producers start to get more aggressive with their products, marketing, etc.

As an aside, having worked in a very litigious corporate environment, a lot of corporate executive types will force the issue, because quite often their jobs are on the line. Stock holders, boards of directors, CEO's, CFO's, etc., typically do not like piles of money being spent on law suits that are later dropped. Heads usually roll when these things happen...

aka_mythos wrote: Let's put it another way, what is the entymology of GW's "Space Marines?"-Its "space marine," not "space" and "marine." GW didn't take two separate words together to make a name, they took an established description.

Sorry, I'm an English major....

The word you're trying to use is "etymology." "Entymology" is a mis-spelled study of insects.

Edit: BTW, my research says that the term "space marine" first appeared in a Robert Heinlein story, "Misfit," in 1939; he used it again in "The Long Watch" in 1941. In the 1970s, there was the "Marine Space Corp" in the Doctor Who series. In the late 70's and early 80's, the Japanese series, "Star Blazers," used the term "space marines" to describe the ground troops. Ironically, the specific wording "space marine" hasn't been used all that much, though many very similar names for very similar ideas have been used: Galactic Marines, Mobile Infantry, Colonial Marine Corp, United Star Marine Corp, etc.

ArbeitsSchu wrote:
I believe Heinlein may have got the drop on GW for "space marine" by a considerable period. Like 60 odd years.

If you want to talk about the concept of the 'space marine':
E.E. Smith beat Heinlein by 2 years, with his "Lensman" series published in 1937. He, however, called them "Galactic Marines".

The first time the concept of a "space marine" appeared in a Heinlein work is in 'Misfits', published in 1939. Next mention was in "The Long Watch", published 1941. Heinlein, in both works, did actually call them "space marines" however. Then he altered the name the next time he did something with the concept, which gave us the amazing piece of fiction that is 'Starship Troopers', featuring the 'Mobile Infantry'.

Hopefully the outcome will be favorable
Other than that, Chapterhouse Studios makes awesome bitz!

No matter what the outcome is, it will be favorable.

The question is "to which side?"


Eri

Saldiven wrote:Sorry, I'm an English major....

The word you're trying to use is "etymology." "Entymology" is a mis-spelled study of insects.

Edit: BTW, my research says that the term "space marine" first appeared in a Robert Heinlein story, "Misfit," in 1939; he used it again in "The Long Watch" in 1941. In the 1970s, there was the "Marine Space Corp" in the Doctor Who series. In the late 70's and early 80's, the Japanese series, "Star Blazers," used the term "space marines" to describe the ground troops. Ironically, the specific wording "space marine" hasn't been used all that much, though many very similar names for very similar ideas have been used: Galactic Marines, Mobile Infantry, Colonial Marine Corp, United Star Marine Corp, etc.

Sorry, that was my auto-correct being funny, like ha-ha-stupid computer.

Sentence construction and diction aside, what your pointing out is exactly my point. GW lifted something that was established as a generic term simply capitalizing and using it as a descriptive proper name to establish their protangonists as that immediately identifiable pre-existing archetype.

Janthkin wrote:Here, though, we're talking about miniature plastic & pewter models. And trademarks are all about context - see "Apple," the fruit, the record label, and the technology company.

Suffice it to say, I think the trademark is actually a pretty good one, particularly given all of the secondary meaning it has acquired within its field of use.

Put of curiosity, do you know what happened with the Apple trademark when Apple (the tech company) went into the music biz? Did Apple Records throw a fit?

Also, I think in this case what I think is called (Not even a paralegal here, let alone a real lawyer) nominative use of a trademark applies. Chapterhouse's site says 'Space Marine compatible shoulder pads.' If I understand right this is totally allowed under trademark law, and at most GW can insist nominative use be done in a specific way (IE, back in the 3.5 days, Hasbro required that a D&D compatible notice be in the upper right corner of the product, to prevent confusion with official D&D products).

Requia wrote:

Janthkin wrote:Here, though, we're talking about miniature plastic & pewter models. And trademarks are all about context - see "Apple," the fruit, the record label, and the technology company.

Suffice it to say, I think the trademark is actually a pretty good one, particularly given all of the secondary meaning it has acquired within its field of use.

Put of curiosity, do you know what happened with the Apple trademark when Apple (the tech company) went into the music biz? Did Apple Records throw a fit?

Yes, they did. There have been at least two lawsuits about it. Somehow they have been resolved. I don't remember the details. It should be available online somewhere.

WWF vs. WWF as well?

World Wildlife Fund won that one.

That explains the WWE change.

I'd point out that Apple Records and Apple Computers isn't a good example in this case, its more akin to Microsoft DOS or Microsoft Windows (for those not aware, Disk Operating System and Windowed Operating System are the generic terms Microsoft was grabbing).

Requia wrote:Put of curiosity, do you know what happened with the Apple trademark when Apple (the tech company) went into the music biz? Did Apple Records throw a fit?.

http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer
BTW Apple Computers not only copied the name of the Beatles record company but also the trademarked logo.

Kilkrazy wrote:World Wildlife Fund won that one.

Gorillas and bears versus men who pretend to hit each other, it was no contest.

Eldanar wrote:

odinsgrandson wrote:
...But they might want to keep the Bully Card to play again later...

...I think GW has to get some sort of win on the merits - on something. Otherwise, it just looks like a paper tiger, and we'll see 3d party producers start to get more aggressive with their products, marketing, etc.

As an aside, having worked in a very litigious corporate environment, a lot of corporate executive types will force the issue, because quite often their jobs are on the line. Stock holders, boards of directors, CEO's, CFO's, etc., typically do not like piles of money being spent on law suits that are later dropped. Heads usually roll when these things happen...

You make a good point. As a note, I've read one of Games Workshop's letters to stockholders, and they made it very clear that "protecting their Intellectual Properties" was paramount on their priorities.

It is possible that they've talked it up so much that they simply cannot let it go without looking like they aren't protecting their stockholders' interests. And with that kind of pressure, I can see why they might be pursuing a lost cause (even if someone knows it is lost).

On the other hand, it is always possible that they think they can win this, but they would also have to think that they don't need to be specific with their claims, and I just can't see how someone could think that.

Kroothawk wrote:

Requia wrote:Put of curiosity, do you know what happened with the Apple trademark when Apple (the tech company) went into the music biz? Did Apple Records throw a fit?.

http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer
BTW Apple Computers not only copied the name of the Beatles record company but also the trademarked logo.

Not according to the linked article... It's more that the agreement was that Apple (Computer) agreed to stay away from audio, which was the older Apple (Records)'s turf. The boundaries of this were a bit vague, as computers have had audio of some sort for decades, and this caused subsequent lawsuits, but the biggest lawsuit was the recent one as Apple effectively became a distributor for music.

Apple Records generally used a full apple, so Apple's bitten apple was different.

To make this relevant to 40k, it'd be more like if a company started to make Space Marine bodywash. This would, technically, be legal. If a bit bizarre. GW and the Bodywash company could sue over it, but it probably wouldn't go anywhere. If the Bodywash company then moved into plastic toys, GW might have to talk to them again, as that's a different story.

Okay, so here's what's happening with the lawsuit.

At the hearing on Wednesday in which Chapterhouse Studios presented its renewed motion to dismiss, Judge Kennelly denied the motion to dismiss, required an answer to the amended complaint by 4/20/2011, and rescheduled the status conference for 5/11/2011.

"Motion to dismiss [35] is denied for the reasons stated in open court. Status hearing held and continued to 5/11/2011 at 09:30 AM. Answer to amended complaint is to be filed by 4/20/2011."

However, Judge Kennelly indicated that he would require Games Workshop to respond to early discovery aimed at clarifying its copyright claims.

What this means, as far as I understand, is that Chapterhouse will be able to direct discovery to Games Workshop prior to answering the complaint and Games Workshop will be required to answer said interrogatives. Ostensibly, the purpose of this is to clarify the claims of copyright infringement, meaning that when Chapterhouse asks Games Workshop which of its products are accused of infringement and in what way, Games Workshop will be required to answer and anything left out would be out of the case, assuming that I understand this correctly.

My guess is that Judge Kennelly was rather unhappy with Games Workshop, but not so pissed off as to dismiss the case right off. This decision of his to require Games Workshop to respond to early discovery is a rather direct and pointed way to get some focus on the case.

I think that Judge Kennelly was unhappy with the amended complaint and figured that he didn't want to see a bunch of back and forth over this issue, so instead of allowing Games Workshop to amend the complaint again, he required it to respond to early discovery, thus forcing Games Workshop to tip its hand. All of this is pure speculation on my part. I further speculate that Kennelly doesn't feel that he's got much of anything to go on in this case so far and he's looking for some clarification before he starts making decisions.

Ultimately, I'd say that this is a good thing for Chapterhouse. It'll probably get everything in the world thrown at it, but at least it should be specific. I don't think Games Workshop is in a position to keep being vague at this point and I think that's how Judge Kennelly wants it to be. It is also worth saying that with a requirement for Chapterhouse to answer the complaint by the 20th and a status hearing scheduled for May 11th, Judge Kennelly wants this thing to move along pretty quickly, another reason why I'm guessing he's a little frustrated.

weeble1000 wrote:Ultimately, I'd say that this is a good thing for Chapterhouse. It'll probably get everything in the world thrown at it, but at least it should be specific. I don't think Games Workshop is in a position to keep being vague at this point and I think that's how Judge Kennelly wants it to be. It is also worth saying that with a requirement for Chapterhouse to answer the complaint by the 20th and a status hearing scheduled for May 11th, Judge Kennelly wants this thing to move along pretty quickly, another reason why I'm guessing he's a little frustrated.

Couldn't have anything to do with the VI Amendment of the US Constitution? The fair and speedy trial one?

The 20th is more then 2 weeks away... seems like more then ample time to get their facts together. I don't read any emotion into this at all from the judge, in regards to CH or GW. Its not like he's making them pull an all nighter to make their case. I know it might be fun to ascribe some intensity to this like its a Law & Order episode or somethng, but really 5 minutes listening to this whole procedure would probably put most of us to sleep.

NELS1031 wrote:

Couldn't have anything to do with the VI Amendment of the US Constitution? The fair and speedy trial one?

Not really. In the RPG world, there's a dust up between the orginal creators of Villians and Vililantes, now Monkey house games, and Fantasy games unlimted, the distrubutor/printer/working partner(I forget exact what the actual title is). The case is going on through 2011 into 2012 summer, with discovery and rebuttle and such.

VI ammendment is more geared towards criminal, not civil trial. So no that might not have anything to do with it at all.

Fair enough.

Worth mentioning that my post wasn't meant to be snarky at all, just an honest question.

The 5th Ammendment applies to criminal trials and other actions against individuals/groups by the government. It does not apply at all in civil cases.

weeble1000 - thank you VERY much for the updates, as well as for the explanation/commentary, it is appreciated!

weeble1000 wrote:My guess is that I think that I further speculate that I'm guessing.

The update is appreciated, but it's really a lot better if you leave out the stuff I quoted above

The chap is allowed to have an opinion y'know.

Ketara wrote:The chap is allowed to have an opinion y'know.

Agreed. Not being of the legal persuasion I find his commentary very helpful. What use is the information if you don't receive assistance in interpreting it? I think all the legal professionals commenting in this thread have been excellent.

Ketara wrote:The chap is allowed to have an opinion y'know.

Yes and I'm allowed to have an opinion about that, right?

What he did is give us info, which is great, but after that he sets a certain tone that is purely his (probably incorrect) speculation, which in turn will be interpreted as fact by some. Because of this last bit we could do without a lot less guessing & speculating in threads like these. That is my opinion

Yes you are TBD
Not sure what the problem is though, as we are aware that there is speculation rather than fact if someone is honest enough to state that something is their opinion.

You seem to be asking Weeble to remove the caveat then complain that speculative comments will be interpreted as fact.

The point is that Weeble and others have offered their useful and interesting insights into what may happen in the case.
This discussion on the other hand is merely dragging the thread OT.

Chibi Bodge-Battle wrote:Not sure what the problem is though, as we are aware that there is speculation rather than fact if someone is honest enough to state that something is their opinion.

You seem to be asking Weeble to remove the caveat then complain that speculative comments will be interpreted as fact.

Unfortunately while you and I and others may be aware there also are many dumbarses who are not able to make the distinction. It's not exactly like this hasn't caused misinterpretations and wrongful assumption of fact @ Dakka & the internetz before. So better to prevent it, if possible.

I did not ask him to remove anything, but attributing emotions to another person (in this case judge Kennelly or whatever his name is) in legal matters and/or certain other situations is something we can really do without in the future. That, of course, in my opinion.

OK - we get it everyone!

Aside from certain legal 'facts' in this thread, everything else is "opinion", be it legal, personal or otherwise!

Of which, of course, we're all entitled!

Thanks!

Personally, i like the personal comments. speculation right or wrong isnt important, its discussing the matter of why things are progressing as they are that IS. we cant pretend to know whom has the right of it till judgement is passed. and then all bets are off anyway and everything we HAVE discussed dont mean diddly.
As for Tone well TBD, if your allowed opinion i find it quite all right for others to have a tone. and as YOU DO and ARE intitled to have a Voice, so is everyone else. tone, speculation and all.
But thats also just my opinion..

Alpharius wrote:OK - we get it everyone!

Omegon is always with you isn't he

TBD wrote:Unfortunately while you and I and others may be aware there also are many dumbarses who are not able to make the distinction. It's not exactly like this hasn't caused misinterpretations and wrongful assumption of fact @ Dakka & the internetz before. So better to prevent it, if possible.

People who think that everything posted on the internet is absolute truth can't be the measure for Dakka postings. And I'd rather like to read here the opinion of people with a law background than contributions like "I hate leechers, hang them without a trial".

Anyone who has dealt with lawyers will know that they never give anything except an opinion or a bill.

TBD, If you want a thread that is purely factual updates about the docket, perhaps we can request that such a thread be created and locked to disallow commentary. Alternatively, someone could host the documents pertaining to this case. I will be happy to pull them as they are posted and provide them in .pdf form. I think that would be a pretty good idea, actually, as such documents can be fiddly to access if you don't know where to start looking. Do you have any ideas about the best way to set this up? Does anybody else have any ideas?

That is a very kind offer.

It would be best done as a Article.

The author of an Article can lock it so only designated users have access to make edits.

I appreciate the commentary by our resident experts in the legal profession. It's a bit silly to expect everything being discussed in regards to a court case to be "only the facts" when it hasn't even gone to trial....thus the discussion. I'll assume here that noone here is directly involved in the case so all that we're going to get is commentary, discussion and yes, opinion.

TBD, it might help if you realize the litigious nature of America (sadly enough) that such caveats are both normal and necessary. Especially when attorneys are involved.

Kilkrazy wrote:Anyone who has dealt with lawyers will know that they never give anything except an opinion or a bill.

Well, that's pretty much all a lawyer has to offer. Law is simply offering an opinion about the law.

Paralegals/secretaries do most of the actual filing work.

That said, I think weeble1000 is spot on with his assumptions. The judge didn't like GW's amended complaint, but wasn't willing to grant CH's motion to dismiss. So he took option 2 and required GW to deal with early discovery.

I quite like the informative way this threads been going.
Opinions are valid, And informed opinions even more so.
The lawyers of this thread, have expressed their opinions, And one should remember that as they do this everyday,
they have more knowledge as to the inner workings of the courts.

Other people will think as they are inclined too,
And no amount of good information will change that.

All this whole situation is doing, is making me go ahead and make my
big orders from Chapterhouse now. They provide good conversion items
that aren't readily available elsewhere, at good prices.

Legalities aside, I figure anything that helps promote and encourage
the hobby can't be bad. Also, its not like they are releasing full kits
that replace 40k figures. You would still need the base kit that the
conversions would be added too... so that still gets sales for GW.

*shrugs* Oh well, no big deal to me either way.

Ironically, Games Workshop isn't going after the people who do make complete replacement kits (like Avatars of War or Mantic Games). Of course, they wouldn't have a leg to stand on if they did.


I know the opinions we bring up are really pretty insubstantial. I'd really love to see a page dedicated to only the facts of the case. Although I really like the discussion as well. If someone does put up an updates only page/thread, please let us all know about it here.

weeble1000 wrote:
My guess is that Judge Kennelly was rather unhappy with Games Workshop, but not so pissed off as to dismiss the case right off. This decision of his to require Games Workshop to respond to early discovery is a rather direct and pointed way to get some focus on the case..

I think you have an interesting idea there. Clearly, no one has brought forward enough evidence for a ruling, and the responsibility for that is squarely on the shoulders of the GW lawyers.

Another possibility is that he believes that GW's vagueness might be intentional (as I have supposed). It is possible that they want this case thrown out with as little specificity as possible, thus setting the weakest precedent possible. And maybe he wants to keep GW from doing this again.

Of course, that's assuming that the GW lawyers think the case is lost. There might be other reasons why they think the precedent should be vague- maybe they want to be able to bring up other issues later (or spring something on an under-prepared defense team).

At any rate, I think this might be the best thing for the community. Other miniatures companies are watching this, and it would be nice to have a very solid precedent set for the legality of these kinds of works.

Has there been any movement on the case, from either side?

Seems awfully quiet out there...

odinsgrandson wrote:Ironically, Games Workshop isn't going after the people who do make complete replacement kits (like Avatars of War or Mantic Games). Of course, they wouldn't have a leg to stand on if they did.

The problem with going after those guys is that the fantasy world is so vague and well travelled that anyone can produce an Orc or Dwarf. As can be seen by the hundreds of smaller vendours eeking out an existance. What is not so easy, and is the crux of the argument in this case, is setting stuff that is deliberately infringing on a specific universe - 40k, and the time that GW have spent building up their 'arena of future combat'. This is why for Sci Fi at least, there are so many universes and settings that don't cross over. Yes, there will be elements that you can recognise in some, but for the most part they are still separate.

What we are seeing here here is how the US legal system differs from the UK system, and how companies can come a (potential) cropper when dealing with (for them) relatively new rules of engagement. GW aren't the first and they won't be the last to have to deal with the US legal system ( remember BP? Hounded as a UK business during the crisis, even though it is mostly owned by american shareholders), the difference being that we have a stake in it (purchases/aesthetic/quality) and other companies too (outside companies eating into high profit lines - Marines/GRYMN etc). The net result of the action could have severe consequences for how the wargaming industry works, but probably not.

Alpharius wrote:Has there been any movement on the case, from either side?

Seems awfully quiet out there...

None past what I posted about the renewed motion to dismiss. Chapterhouse isn't required to answer the amended complaint until the 20th. Presumably, Games Workshop is responding to early discovery from Chapterhouse Studios, but there's no evidence of that at the moment. The only new update is that Paulson filed pro se appearance, meaning he's representing himself. I guess his motion for counsel was denied, which is to be expected given that this is civil litigation.

Weeble, I appreciate the extrapolation. I get the "Death from PowerPoint" glaze in my eyes from reading legalese and the translation is most welcome.

I'm shocked Paulson is still part of the suit----didn't they mistakenly name him as the sculptor of the "Spider Super Heavy That Would Look Good In Space Anime Armies ™". I thought they dropped the suit against him?

And what exactly do you mean "Motion for counsel"? You are only entitled such due course in a criminal case?

/Ignorant when it comes to the law
//I know how to pay speeding tickets though

AgeOfEgos wrote:...what exactly do you mean "Motion for counsel"? You are only entitled such due course in a criminal case?

You are entitled to counsel in criminal proceedings every time, no matter what, the state will appoint (and pay for) an attorney; you need but ask.
In civil cases it can be a bit more complicated; you have no absolute right to that, no (of course you can always hire counsel yourself!).

now first off: I'm a law student - of the Dutch persuasion, so I basically know very little about the US system (the above, I'm pretty sure is correct), and don't have the time to look it up for you, so I can sketch just about how we do it over here (and assume it will be largely similar on the other side of the big pond): there's a certain amount of money set aside to pay for counsel for those who cannot afford it, but do need legal assistance, in a civil case. now that budget is not limitless, so there are limits to eligibility: one's income can be considered, but the complexity of the case as well.

Simply stating to the court that you never sculpted that thing in the first place, which is easily corroborated, does not require an expensive lawyer; that money is better spent on a case which does need that assistance.
so yes, you're only entitled to that (in an absolute sense) in a criminal case.
maybe one of the US professionals could concisely explain (if and) how counsel could be provided in a civil case?

As to the case, now maybe I haven't read the complaint closely enough but there's one thing that surprises me: although GW goes so far as to claim a trademark on roman numerals, a chevron, the arrow (of law, or even a regular one) andsoforth, they don't really target the pre-heresy Mk.I Rhino conversion kit at all. Now if the Tervigon kit is a close call (I wouldn't feel comfortable about that down here for sure, for what I know...) the Rhino kit is worse. I have one lying in front of me still on sprue, one clipped out of sprue and partly fitted on a rhino, and a genuine Mk.I rhino right beside it. It's specifically meant to resemble GW IP (if outdated, very old IP) on purpose, as closely as possible. that's the one I'm most scared about... but I don't see them arguing that. have I missed anything?

(It'd make me very sad if they had to stop sales on that - enough for me to keep one here, on sprue, so if it ever becomes permanently unavaidable I can at least cast my own. it's quite a simple model actually, you could probably cast it with instant mold and greenstuff, then stick some plasticard cut parts on the back to keep it in place on the rhino. or just glue it on. nice stuff. of course I'd rather pay a fair price to the guys who make the sculpt and casts, but if that becomes impossible, at least I'll still be able to use that kit...)

This thread has made me place a substantial order, though I was informed that there is a 3week delay before the items are made and shipped.

@weeble1000,

I am making an assumption here that no-one will find out what discovery finalises until the actual court appearance in May. Is that the case?

Thanks

Andrew

That's my impression Andrew. Discovery is privileged, so there's no way to know what's going on with that at the moment. I expect that by the 20th we'll see a renewed motion to dismiss from Chapterhouse Studios. Assuming Games Workshop is answering Chapterhouse's interrogatories at the moment, my guess is that Chapterhouse will renew its motion to dismiss based on the answers that it receives from Games Workshop.

Judge Kennelly likely dismissed the renewed motion because he didn't feel there was enough information at hand to dismiss the case outright, so he essentially required Games Workshop to get specific about it's claims. If Games Workshop provides that specificity, it makes sense for Chapterhouse to make another motion to dismiss that Judge Kennelly would be in a position to make an informed decision about. If Games Workshop fails to adequately specify its claims, it's an obvious move to make another motion for dismissal. So, either way things fall, I think a third motion to dismiss is likely.

I don't know what's going on with early discovery, if anything, so there's no way to really guess about the likely content of a subsequent motion to dismiss or the Judge's reaction to it, other than to say that if Games Workshop fails to get specific, Judge Kennelly's treatment of the case thus far strongly suggests that he would dismiss the case. I expect some measure of specification from Games Workshop, but how much is anyone's guess at this point.

We'll see what develops next week.

Thank you weeble,

Now when do you think John Grisham will write for BL?....

Cheers

Andrew

He is too busy writing the new Codex Aetournium, which will replace the Inquistion, to be writing novels for BL, Andrew.

I have to admit, the suspense here is killing me!

OK, not really, but I am curious if anyone has any updates at all...

As of 8:00 a.m. CST, Pacer is not showing anything new, other than that Paulson is appearing pro se and that he has been issued a summons to file an answer to GW's complaint.

I have a question for our resident legal types; If a firm takes on a case pro bono as is the case here, are they somehow committed to see it through to resolution, or can they retract their goodwill whenever they see fit?

Alpharius wrote:I have to admit, the suspense here is killing me!

OK, not really, but I am curious if anyone has any updates at all...

im with you.
BTW, is there an 'end date' for when the new complaint has to be in for? (not sure that makes sense)

Tantras wrote:I have a question for our resident legal types; If a firm takes on a case pro bono as is the case here, are they somehow committed to see it through to resolution, or can they retract their goodwill whenever they see fit?

If a lawyer takes on a case pro bono they have the same ethical responsibilities as any paid lawyer as it relates to representing the client. You can't immediately drop out, and if you're in the middle of a trial, you usually have to petition the court to withdraw as counsel.

Ethical rules vary from one jurisdiction to another, so YMMV. But in general, no, they can't just drop out of the case.

biccat wrote:

Tantras wrote:I have a question for our resident legal types; If a firm takes on a case pro bono as is the case here, are they somehow committed to see it through to resolution, or can they retract their goodwill whenever they see fit?

If a lawyer takes on a case pro bono they have the same ethical responsibilities as any paid lawyer as it relates to representing the client. You can't immediately drop out, and if you're in the middle of a trial, you usually have to petition the court to withdraw as counsel.

Ethical rules vary from one jurisdiction to another, so YMMV. But in general, no, they can't just drop out of the case.

Thanks biccat, that's interesting. I assume it means that pro bono work is examined carefully before it is entered into, as the firm themselves are picking up the tab.

Just to be absolutely clear though, when you say ethical responsibilities, are we talking 'gentleman's understandings' of a non-legal nature? For instance, it would it merely be frowned upon to leave mid-case, or are we saying there are actually penalties and/or consequences for doing so?

Okay a follow on from that.

Lets say that CHS wins but GW has leave to appeal. Now CHC gets to reclaim their fees from GW, but would they then have to represent CHS at future court appearances? Or is their part finished?

Cheers

Andrew

Tantras wrote:Thanks biccat, that's interesting. I assume it means that pro bono work is examined carefully before it is entered into, as the firm themselves are picking up the tab.

Just to be absolutely clear though, when you say ethical responsibilities, are we talking 'gentleman's understandings' of a non-legal nature? For instance, it would it merely be frowned upon to leave mid-case, or are we saying there are actually penalties and/or consequences for doing so?

Ethics in the law are governed by individual jurisdictions, but a generally good reference is the Model Rules of Professional Conduct. Failure to follow the rules can result in disciplinary action, which is generally administered by a commission on professional responsibility (made up of lawyers and maybe judges).

Discipline may be as light as a reprimand and as severe as disbarment, and anywhere in between. Disciplinary records in local bar publications are always an entertaining read, although they might be scary as well (for example, one attorney had his license suspended for 30 or 60 days for failing to confer with a client regarding an absurd settlement agreement that he knew his client would never accept).

AndrewC wrote:Okay a follow on from that.

Lets say that CHS wins but GW has leave to appeal. Now CHC gets to reclaim their fees from GW, but would they then have to represent CHS at future court appearances? Or is their part finished?

They don't have to represent CHS on appeal. In most cases, a client wouldn't retain the same attorney to represent them on appeal as represented them in the original case. Also, in the US appeal from a final lower court decision is taken as a right. Only appeal to the Supreme Court requires a writ of certiorari.

Now, that's assuming that CHS wins before GW appeals. I don't know if the pro-bono attorney would be required to represent CHS in a mid-trial appeal (which I can't remember the latin term for at the moment...), but those are fairly rare.

AndrewC wrote:Lets say that CHS wins but GW has leave to appeal. Now CHC gets to reclaim their fees from GW

Note that in the US legal system, in most circumstances, the prevailing party is not entitled to recover their legal fees from the losing party. That's a big difference from much of the rest of the world.

Tantras wrote:

biccat wrote:

Tantras wrote:I have a question for our resident legal types; If a firm takes on a case pro bono as is the case here, are they somehow committed to see it through to resolution, or can they retract their goodwill whenever they see fit?

If a lawyer takes on a case pro bono they have the same ethical responsibilities as any paid lawyer as it relates to representing the client. You can't immediately drop out, and if you're in the middle of a trial, you usually have to petition the court to withdraw as counsel.

Ethical rules vary from one jurisdiction to another, so YMMV. But in general, no, they can't just drop out of the case.

Thanks biccat, that's interesting. I assume it means that pro bono work is examined carefully before it is entered into, as the firm themselves are picking up the tab.

Just to be absolutely clear though, when you say ethical responsibilities, are we talking 'gentleman's understandings' of a non-legal nature? For instance, it would it merely be frowned upon to leave mid-case, or are we saying there are actually penalties and/or consequences for doing so?

Every practicing attorney in the U.S. (presumably) is a member of one or more state bar associations which have their own sets of rules of ethical and professional conduct. Violating these rules typically can amount to a slap on the wrist to disbarment. So, there could be potential penalties and consequences under State bars. Also, many specific courts have their own bars, and there could be penalties and consequences under that specific court or set of courts.

Most attorneys do not withdraw from cases mid-stream without a very good reason: either some very serious problems with the client, personal issues, or some other sort of hardship. Usually the judge has to agree. And too, there is an added wrinkle of whether a client is actually a client of the firm or of a specific attorney. Quite often, even if a speciifc attorney withdraws, a firm will continue representation. This is handled differently state to state as well as firm to firm.

For example, GW's lead counsel withdrew several weeks back because she left the firm; however, the firm continued to maintain representation of GW, and is presumably putting someone else forward to act as lead counsel.

Janthkin wrote:

AndrewC wrote:Lets say that CHS wins but GW has leave to appeal. Now CHC gets to reclaim their fees from GW

Note that in the US legal system, in most circumstances, the prevailing party is not entitled to recover their legal fees from the losing party. That's a big difference from much of the rest of the world.

CHS' lawyers have laid basis for a claim that GW's lack of specificity was more GW's attempt to preasure an unrepresented CHS into bending to GWs will. That lack of specificity could be shown to be a lack of basis for the claim. The lack of footing on GW's part can be construde by the court as a frivolous claim and opens them up to paying CHS legal fees. Even though CHS lawyers are working pro bono they may still pursue GW for legal fees, frivolousness on GW's part is an exceptions that would allow recoveries.

Eldanar wrote:Most attorneys do not withdraw from cases mid-stream without a very good reason: either some very serious problems with the client, personal issues, or some other sort of hardship. Usually the judge has to agree. And too, there is an added wrinkle of whether a client is actually a client of the firm or of a specific attorney. Quite often, even if a speciifc attorney withdraws, a firm will continue representation. This is handled differently state to state as well as firm to firm.

For example, GW's lead counsel withdrew several weeks back because she left the firm; however, the firm continued to maintain representation of GW, and is presumably putting someone else forward to act as lead counsel.

The only problem with that being that the new representative may not know your case as thoroughly as the original.
happened to my dad last year, he still won the case, but not as easily as he should have done.

Janthkin wrote:Note that in the US legal system, in most circumstances, the prevailing party is not entitled to recover their legal fees from the losing party. That's a big difference from much of the rest of the world.

Now thats a big plus for the American system. No win, no fee lawyers ought to be banned.

I thought that if the case is thrown out, and/or deemed malicious, then the defending party could claim costs. But then I could also be completely wrong. {Forget this part aka_mythos has answered it for me}

Ah well, let look forward to May then. Could someone ask for a webcam to be installed in the court?

Cheers

Andrew

"Sir, there are a bunch of geeks on the internet taking a huge interest in this case. Would you mind if we just opened this 'Skype' thingy and let them watch?"

I'd listen in.

LOL
I probably would, too, actually. : )

Eric

In order to recover fees, I believe Chapterhouse would have to prevail in a malicious litigation claim. Without going into it in any detail, this would basically mean that Games Workshop filed the suit knowing it was without basis for the purpose of causing harm.

Although a finding of malicious litigation first requires a favorable outcome for the defendant, such as a dismissal of the case, the facts for both infringement and malicious litigation are the same and can be tried at the same time, to the best of my knowledge. In that case, the jury would be instructed as the the conditions that must be met in order to make a determination on the malicious litigation claim.

Generally speaking, it's tough to prove this kind of claim, although I think Chapterhouse could could make a counterclaim that would at least survive as a fact issue for the jury. It may not be worth it to do that though.

No such counterclaim has been made thus far, but the case hasn't progressed very far either. Chapterhouse's attorneys may be interested in keeping the dismissal issue clean at this point in time.

Revenent Reiko wrote:

Eldanar wrote:Most attorneys do not withdraw from cases mid-stream without a very good reason: either some very serious problems with the client, personal issues, or some other sort of hardship. Usually the judge has to agree. And too, there is an added wrinkle of whether a client is actually a client of the firm or of a specific attorney. Quite often, even if a speciifc attorney withdraws, a firm will continue representation. This is handled differently state to state as well as firm to firm.

For example, GW's lead counsel withdrew several weeks back because she left the firm; however, the firm continued to maintain representation of GW, and is presumably putting someone else forward to act as lead counsel.

The only problem with that being that the new representative may not know your case as thoroughly as the original.
happened to my dad last year, he still won the case, but not as easily as he should have done.

I agree completely. I have also seen it firsthand (where I was representing a different party) where a firm went through 3-4 attorneys on a case. Each attorney spent hours going over the files and billed their client accordingly. It was involving an estate, which means that there was some judicial oversight over the expenses. And the judge got pissed and cut that firm's fees in half.

Eldanar wrote:

Revenent Reiko wrote:

Eldanar wrote:Most attorneys do not withdraw from cases mid-stream without a very good reason: either some very serious problems with the client, personal issues, or some other sort of hardship. Usually the judge has to agree. And too, there is an added wrinkle of whether a client is actually a client of the firm or of a specific attorney. Quite often, even if a speciifc attorney withdraws, a firm will continue representation. This is handled differently state to state as well as firm to firm.

For example, GW's lead counsel withdrew several weeks back because she left the firm; however, the firm continued to maintain representation of GW, and is presumably putting someone else forward to act as lead counsel.

The only problem with that being that the new representative may not know your case as thoroughly as the original.
happened to my dad last year, he still won the case, but not as easily as he should have done.

I agree completely. I have also seen it firsthand (where I was representing a different party) where a firm went through 3-4 attorneys on a case. Each attorney spent hours going over the files and billed their client accordingly. It was involving an estate, which means that there was some judicial oversight over the expenses. And the judge got pissed and cut that firm's fees in half.

theres a fair ruling!
pretty ridiculous conduct from the attorneys.

biccat wrote:

AndrewC wrote:Okay a follow on from that.

Lets say that CHS wins but GW has leave to appeal. Now CHC gets to reclaim their fees from GW, but would they then have to represent CHS at future court appearances? Or is their part finished?

They don't have to represent CHS on appeal. In most cases, a client wouldn't retain the same attorney to represent them on appeal as represented them in the original case. Also, in the US appeal from a final lower court decision is taken as a right. Only appeal to the Supreme Court requires a writ of certiorari.

Now, that's assuming that CHS wins before GW appeals. I don't know if the pro-bono attorney would be required to represent CHS in a mid-trial appeal (which I can't remember the latin term for at the moment...), but those are fairly rare.

My assumption (and mind you, it's quite the uninformed assumption) is that this case was only taken on by CHS' pro-bono attorney because they are interested in generating a bit of precedent in the issues at hand. If (and that's a big IF) that is the case, then I could foresee the bono firm being in it for the long haul, since the higher the appeal goes, the greater the value of the precedence.

Of course, the converse of that is that it's in GW's interest to settle this as quickly as possible, at as low a level as possible.

It's really a fascinating turn of events: now that the possibility of ruinous attorney's fees are out of the picture for CHS, they have almost nothing to lose. GW, on the other hand, has almost nothing to gain, and a massive possible loss. As they make clear in their financial reports, their IP and the licensing thereof are an increasingly valuable part of their portfolio.

Firstly I'm using the works computer and so I can't access some other forums. I see that CHS have posted their reply, thanks Weeble, but my machine wont open the thread.

A a matter of interest I see that CHS are seeking damages and costs against GW. From what little I could see.

Shame Judge Judy couldn't hear this case, at least it would be televised.

Cheers

Andrew

GW's strategy in cases like this is partly to just be bigger than the other guy, thus frightening off companies who might actually have a reasonable claim, and winning without a proper fight.

It has failed this time because Chapter House have got decent legal representation.

My theory is that Chapter House's law firm took on the case pro bono because they want to stop GW from bullying small companies. (Pro bono is short for pro bono publico, which means for the public good, not for the individual litigant's benefit.)

Biffing GW with substantial costs would add to the deterrent effect.

Kilkrazy wrote:GW's strategy in cases like this is partly to just be bigger than the other guy, thus frightening off companies who might actually have a reasonable claim, and winning without a proper fight.

It has failed this time because Chapter House have got decent legal representation.

My theory is that Chapter House's law firm took on the case pro bono because they want to stop GW from bullying small companies. (Pro bono is short for pro bono publico, which means for the public good, not for the individual litigant's benefit.)

Biffing GW with substantial costs would add to the deterrent effect.

So, basically, GW drags them to court and atempts to win as they can outlast the smaller company due to legal costs?

Simpler than that.

A C&D letter from GW's lawyers is usually enough to persuade a small company or fan website to give up before the fight has even begun.

AvatarForm wrote:

Kilkrazy wrote:GW's strategy in cases like this is partly to just be bigger than the other guy, thus frightening off companies who might actually have a reasonable claim, and winning without a proper fight.

It has failed this time because Chapter House have got decent legal representation.

My theory is that Chapter House's law firm took on the case pro bono because they want to stop GW from bullying small companies. (Pro bono is short for pro bono publico, which means for the public good, not for the individual litigant's benefit.)

Biffing GW with substantial costs would add to the deterrent effect.

So, basically, GW drags them to court and atempts to win as they can outlast the smaller company due to legal costs?

pretty much, its basically bullying.

Revenent Reiko wrote:

AvatarForm wrote:So, basically, GW drags them to court and atempts to win as they can outlast the smaller company due to legal costs?

pretty much, its basically bullying.

I don't think you should go that far. GW shouldn't have to spend thousands of dollars on attorneys fees every time someone infringes their intellectual property. If they were forced into litigation every time they sent out a C&D letter, they would soon run out of money.

From GW's perspective, this is a clear case of infringement and litigating the case is needlessly expensive.

From CH's perspective, GW is being a bully.

biccat wrote:

Revenent Reiko wrote:

AvatarForm wrote:So, basically, GW drags them to court and atempts to win as they can outlast the smaller company due to legal costs?

pretty much, its basically bullying.

I don't think you should go that far. GW shouldn't have to spend thousands of dollars on attorneys fees every time someone infringes their intellectual property. If they were forced into litigation every time they sent out a C&D letter, they would soon run out of money.

From GW's perspective, this is a clear case of infringement and litigating the case is needlessly expensive.

From CH's perspective, GW is being a bully.

Fair enough, ill admit a biased view on behalf of CHS.
Apologies.

Revenent Reiko wrote:Fair enough, ill admit a biased view on behalf of CHS.
Apologies.

Just pointing out that there are reasons for what appears to be "bullying" tactics.

I don't think your biased view is misplaced, CHS appears to have the better case at the moment.

It's a pity that by voting with our wallets we can't leave comments to tell GW why.

I'd like to ask our resident legal types.

Aren't firms required to do a certain amount of pro-bono work each year? I quasi remember something along those lines. Just curious.

It is completely voluntary. Although I'll add the caveat that some State bar associations might have a pro bono requirement (but I doubt it), and I've never heard of any that do. I am a member of 2 State bars, and both are voluntary for pro bono work. Although since I am now a fed, I would probably be excused even if it were somehow required.

Some firms have a policy to do X amount of pro bono work. IIRC from the CHS firms web site, they do have a pro bono requirement. And too, I would imagine practicing in the area of business patent law and IP, there are not a lot of opportunities to do a lot of pro bono work; so they are being able to fulfill part of their firms mission as well as potentially having other motives for taking the case.

Eldanar wrote:It is completely voluntary. Although I'll add the caveat that some State bar associations might have a pro bono requirement (but I doubt it), and I've never heard of any that do. I am a member of 2 State bars, and both are voluntary for pro bono work. Although since I am now a fed, I would probably be excused even if it were somehow required.

I'm not aware of any requirements for any of my bars either. Although some bars include a throwaway line like "I will endeavor to help those who cannot afford legal services" in the admission oath.

Eldanar wrote:Some firms have a policy to do X amount of pro bono work. IIRC from the CHS firms web site, they do have a pro bono requirement. And too, I would imagine practicing in the area of business patent law and IP, there are not a lot of opportunities to do a lot of pro bono work; so they are being able to fulfill part of their firms mission as well as potentially having other motives for taking the case.

I can count pro bono work against my billable hours requirement, but generally I'm busy enough that I wouldn't have time to do any pro bono work. Plus, who wants to learn about family law when I can do doc review instead?

biccat wrote:I can count pro bono work against my billable hours requirement, but generally I'm busy enough that I wouldn't have time to do any pro bono work. Plus, who wants to learn about family law when I can do doc review instead?

Maybe that's what I was thinking of, thanks. It seems like 100 years ago since I worked in a law office and this thread's kinda been a walk down memory lane.

biccat wrote:

Revenent Reiko wrote:Fair enough, ill admit a biased view on behalf of CHS.
Apologies.

Just pointing out that there are reasons for what appears to be "bullying" tactics.

I don't think your biased view is misplaced, CHS appears to have the better case at the moment.

totally agree on the 'bullying tactics', i know theres a reason, it just seems unreasonable to me to do it that way

biccat wrote:I don't think you should go that far. GW shouldn't have to spend thousands of dollars on attorneys fees every time someone infringes their intellectual property. If they were forced into litigation every time they sent out a C&D letter, they would soon run out of money.

There is a hole in your logic it is this: our system is built arround just that notion; that every time someone does infringe on your IP it is expressly yours and noone else responsibility to pursue it. I think you've largely muddled two ideas and are treating them as a single thing. In an ideal world GW shouldn't have to worry about IP and infringement, but this isn't an ideal world. If it isn't worth GW fronting the money to pursue legal actions, the IP in question isn't really worth the Governments time or protection.

To turn this around, if GW had to pursue litigation every time it sent out a C&D letter out, they would do more to make sure they had a more thought out case with clear cut examples of infringement, instead of the nebulous claims they time and time again lean against websites in pursuit of shutting them down.

biccat wrote:
From GW's perspective, this is a clear case of infringement and litigating the case is needlessly expensive.

From CH's perspective, GW is being a bully.

The difference is CH took precaution in following legal advice as to how they were legally allowed to present their work. GW on the other hand has presented vague claims of infringement, that doesn't show due diligence and are no different than say "they just are;" that after a poorly written C&D that presented the UK's law as the basis for their claim of infringement against a company not in that jurisdiction, all without pursuing any remedial course in reconciling the disagreement before litigation.

The attitude reminds of this time, when I first moved into my house, I had parked my car infront of my house in the street. The neighbor across the street didn't like it their because it made it harder for them to get their car out of their drive way. They told me I had to move it, I didn't feel I had to it was my house. They called the police and a tow truck. I explained it to the police, who gave a warning to the neighbor who ended up paying for the tow truck drivers time. Welcome to the neighborhood.

My point though is GW has shown it has a sense of entitlement, in using C&D to get its way, but that doesn't mean its always right. It doesn't mean every company should cave to them. GW and many other companies do not know what a "gentle hand" is, they really do have a sense of being exceptional because of size and money and often ignore the fact that by being so tough they hurt society and make this world a colder place.

Those are my thoughts too.

Also, I believe GW have used a heavy hand in the past because some of their IP claims are based on rather shakey foundations.

That is why it will be very interesting if the Chapter House case gets to court. We'll see some of GW's broad assertions tested.

I'll add that I've been pro-GW on this issue from the start but err, here's my attempt to briefly win others over with layman-logic (I am no Lawyer, nor do I know much about law).

But if GW were to lose, wouldn't this not only damage the company (who wants that?) but also risk the IP? And considering the amount of money they make from royalties, well, I don't think we want them losing it...

Henners91 wrote:I'll add that I've been pro-GW on this issue from the start but err, here's my attempt to briefly win others over with layman-logic (I am no Lawyer, nor do I know much about law).

But if GW were to lose, wouldn't this not only damage the company (who wants that?) but also risk the IP? And considering the amount of money they make from royalties, well, I don't think we want them losing it...

Nah, they are going to bat to protect their ip, win or lose. They just have to have it on the record that they defend their IP. If they never do somebody else can come in with the defense that's like "well you didn't sue these guys so how can you sue me?". So the outcome doesn't really matter, as far as workshop is concerned and it is my guess this is the only thing they care about.

They won't lose their IP, they won't be damaged at all, other than losing the money they are throwing at this case.

Just because someone wins the right to continue producing stuff that tangentially uses or references your IP doesn't mean you lose your own rights to it. Half the battle is GW showing up to court to demonstrate they are actively protecting their IP. IMO, they would have been better off pretending that CH doesn't exist and saving themselves the effort of publicly identifying them and than being forced into playing their hand. But now they've gone this far they can't really turn back.

Also cases of copyright infringement are taken on their own merits, what applies to CH won't apply to everyone because circumstances are always different. GW will still be able to take other manufacturers to court if they so wish, the Chapterhouse case may set some precedent that others could point to in their defence but GW can still still send out C&Ds and take people to court, but it still gives no where new for recasters and other ripopff merchants to hide.

The worst that will happen to GW is that they have to start thinking twice about sending out spurious C&Ds and threats of legal actions on the slightest whim because people will know they can't back up their bully tactics legally.

The recent Battlescribe (?) incident says otherwise, maybe!

Not everyone is going to be able to afford a good legal staff, or be able to get one pro bono like CHS was able to manage.

Many will fold at the C&D.

So, I think that tactic will continue...

Sucks how the usual anti-bullying tactic of "punch him in the mouth" doesnt work when the bully is an abrams tank and you're a guy with only your fists

Doesnt the UK have anti-bullying laws??! Just claim each of these small companies is one of the precious snowflakes that needs protection

And in honesty, specifically stating that your stuff is for Space Marines and the like is rather taking the biscuit... I mean, hell, one of their products is actually a conversion model for a 'Farseer on a jetbike'... Surely it's just a small step to pretty much directly advocate your stuff as replacement for line models?

Henners91 wrote:I'll add that I've been pro-GW on this issue from the start but err, here's my attempt to briefly win others over with layman-logic (I am no Lawyer, nor do I know much about law).

But if GW were to lose, wouldn't this not only damage the company (who wants that?) but also risk the IP? And considering the amount of money they make from royalties, well, I don't think we want them losing it...

There are two responses to this. First, if GW "loses" then this may mean that it has to be a little more proactive in protecting its items and actually registering the stuff, etc., and not just relying on a blanket statement on its web site as well as hatchet bullying jobs. It also might cause them to produce items people actually want, rather than yet another pointless resin IG vehicle. I remember from a post a long time ago concerning the production of the numerous different poses of LOTR models, someone asking "How many poses of Gimli are really necessary? The only thing left is Gimli on the toilet..."

The second is, you have to define what winning and losing are. Technically, GW could "win" the suit; however, the remedy may only be that CHS has to re-name its products and/or market them in a different way. This would be a technical win for GW, but an actual win for CHS. Just by virtue of the proposed remedy GW listed in its original complaint, I have a feeling that it has set itself up for a fall. Everyone has probably heard about the cases where a plaintiff has won a lawsuit, but was then only awarded a single dollar in compensation. Moral victories don't really pay the bills...

Eldanar wrote:

There are two responses to this. First, if GW "loses" then this may mean that it has to be a little more proactive in protecting its items and actually registering the stuff, etc., and not just relying on a blanket statement on its web site as well as hatchet bullying jobs. It also might cause them to produce items people actually want, rather than yet another pointless resin IG vehicle.

Really? You're going to whine about Forge World doing what they do best: a cool, thematic vehicle for one of their campaign books?
Will someone try to use it in tournament play? Maybe. But most people buying FW's bigger stuff aren't buying them to get an edge on the tournament competition(mostly because the tournament scene doesn't let FW stuff in)--most people buy things like the Crassus for scenic or themed displays to go along with their stuff.

I remember from a post a long time ago concerning the production of the numerous different poses of LOTR models, someone asking "How many poses of Gimli are really necessary? The only thing left is Gimli on the toilet..."

There weren't even really that many Gimli models. The only difference is there was a few "promotional" models of Gimli that brought him up to the same number as the rest of the Fellowship(barring the Hobbits).

To call my post "whining" is a bit of a stretch...

I have no problem with FW producing whatever it chooses to. It just seems to be completely assinine that it concentrates on high end models with little or no sells point, and basically ignores all of the little fiddly bits that GW is now suing CHS for producing.

I haven't bought anything from FW in about 10 years, because it has produced hardly anything aside from IG tank add-ons, titans, and more variant imperial guard troopers. To be fair though, I'll probably pick up the wraithseer when it is available.

I've said it before, and I'll say it again, when GW (or FW) ignores its customer base, and someone else steps in to fill the void for products the consumers want, then it is an opportunity missed by GW. And I have no sympathy for it (them) under those circumstances.

Eldanar wrote:To call my post "whining" is a bit of a stretch...

The thing was just posted today. Complaining about it like it's symptomatic of FW as a whole is what I'd deem a "whine".

I have no problem with FW producing whatever it chooses to. It just seems to be completely assinine that it concentrates on high end models with little or no sells point, and basically ignores all of the little fiddly bits that GW is now suing CHS for producing.

I haven't bought anything from FW in about 10 years, because it has produced hardly anything aside from IG tank add-ons, titans, and more variant imperial guard troopers. To be fair though, I'll probably pick up the wraithseer when it is available.

http://www.forgeworld.co.uk/Warhammer-40000/Space_Marines/Space_Marine-Infantry-Accessories?filter_action=3&filter_value=1
These 3 pages would like a word with you.
Especially when you consider that the majority of those items have been available for quite awhile...
Is the range by any means definitive or complete? Of course not. There's far too many Space Marine Chapters and their variants for that to be plausible.
CH is a far cry away from actually "listening to the customers"--they're just doing what the trends are following.

Do you think it a coincidence they released Salamanders stuff when the Vulkan lists were called "top tier"?

I've said it before, and I'll say it again, when GW (or FW) ignores its customer base, and someone else steps in to fill the void for products the consumers want, then it is an opportunity missed by GW. And I have no sympathy for it (them) under those circumstances.

Consumers don't want the products. They want to whine about not having the products or if the products are available, they want to whine that it's too much.

People wanted "pre-Heresy armor patterns".
What does FW do? Releases the Badab War---a Space Marine v. Space Marine affair--and almost every pattern of armor that was utilized pre-Heresy.

Wait, what's that? There's no Thunder Armor?
Those gits!

Or they could just sell the licenses to the damn bits and have done with it.

ArbeitsSchu wrote:Or they could just sell the licenses to the damn bits and have done with it.

That, sir, makes entirely too much sense.

Saldiven wrote:

ArbeitsSchu wrote:Or they could just sell the licenses to the damn bits and have done with it.

That, sir, makes entirely too much sense.

Actually it doesn't.

Licensing would mean, in all likelihood, that GW can't produce the parts themselves later without getting some legal snafus going on. GW would also have to 'support the licensee' in all manner of things, and I don't know what they'd be having to do in terms of quality-control.

Consumers don't want the products. They want to whine about not having the products or if the products are available, they want to whine that it's too much.

says who? stop generalizing. Obviously someone wants the products or they wouldn't be sold. I understand that you are whining, it doesn't mean all consumers are.

Kirasu wrote:Sucks how the usual anti-bullying tactic of "punch him in the mouth" doesnt work when the bully is an abrams tank and you're a guy with only your fists

Doesnt the UK have anti-bullying laws??! Just claim each of these small companies is one of the precious snowflakes that needs protection

I'm not clear what you are proposing. The suit has been brought in the USA because Chapter House is a US company.


Automatically Appended Next Post:
This is getting off topic again.

People want this thread kept open so that proper legal discussion and explanation can take place. Please stop talking about your opinions of what is or isn't correct, fair, blah blah blah.

It has all been covered in the previous 15 pages.

Kanluwen wrote:

Saldiven wrote:

ArbeitsSchu wrote:Or they could just sell the licenses to the damn bits and have done with it.

That, sir, makes entirely too much sense.

Actually it doesn't.

Licensing would mean, in all likelihood, that GW can't produce the parts themselves later without getting some legal snafus going on. GW would also have to 'support the licensee' in all manner of things, and I don't know what they'd be having to do in terms of quality-control.

GW has partnered with other companies in the past to produce miniatures. It was the case with both Battlemasters and Heroquest. GW did not have to support the games, and neither did it prevent GW from making the same miniatures themselves.

I agree with ArbeitsSchu they should just sell licenses to make the bits. But we have to remember we are dealing with the masters of the business world that are GW corporate.

Kanluwen wrote:

Eldanar wrote:To call my post "whining" is a bit of a stretch...

The thing was just posted today. Complaining about it like it's symptomatic of FW as a whole is what I'd deem a "whine".

That was just an example...if I were so inclined, I could go through and find pages and pages of redundant tripe on the FW web site. Is there really a need for entire units of variant IG? Or Chaos Ogryns? Or what about a whole line of Chaos renegades for a discontinued army? Or 15 alternative leman russ turrets and gun barrels? Or how about individual Tyranid rippers...we really need more rippers. Or the myriad of other useless drivel they hawk out, while established lines are left unfinished.

My point being that GW has to a certain degree has brought this on itself by not fleshing out its exhisting lines before moving on to more esoteric projects.

CH is a far cry away from actually "listening to the customers"--they're just doing what the trends are following.

Consumers don't want the products. They want to whine about not having the products or if the products are available, they want to whine that it's too much.

I'm not defending CHS here either; however, it does tend to produce items that (presumably) sell, and on a 'slightly' faster time line than GW. Hence, why GW is suing CHS...

weeble1000 posted this extract from CH's reaction yesterday:

AFFIRMATIVE DEFENSES
Chapterhouse asserts the following defenses, without regard to whether they are affirmative defenses or matters as to which GW bears the burden of proof. Chapterhouse reserves the right to raise additional defenses as discovery proceeds. Chapterhouse does not assume the burden of proof on any issue, however characterized, on which it does not bear that burden.

GW’s FAC, and every cause of action within it, fails to state a cause of action on which relief can be granted.

This court lacks subject-matter jurisdiction over claims to enforce U.S. copyrights for which GW has not obtained, or has not pleaded ownership of, copyright registrations.

GW’s copyright claims are barred because GW lacks standing to enforce copyrights it does not own.
GW’s copyright claims are barred by the doctrine of fair use.
GW’s copyright claims are barred by the de minimis doctrine.
GW’s copyright claims are barred by the doctrine of independent creation.
GW’s state law claims are barred to the extent they are preempted by federal law.
GW’s claims are barred by its failure to join indispensable parties.
GW’s claims are barred by consent, waiver, acquiescence or license.
GW’s claims are barred by relevant statutes of limitations.
GW’s claims are barred by laches.
GW’s claims are barred by res judicata.
GW’s claims are barred by estoppel.
GW’s claims are barred by the doctrine of copyright misuse.
GW’s claims are barred due to its use of the Lanham Act to impede free and fair competition.
GW’s claims are barred as to any of its actions that violate any unfair competition laws.
GW’s claims are barred due to its unclean hands.
GW’s trademark claims are barred by the defense of nominative fair use.
GW’s trademark claims are barred to the extent it has abandoned its alleged marks.
GW’s claims are barred by the First Amendment to the United States Constitution.
GW’s claims are barred by its failure to mitigate damages.

GW’s claims to statutory damages are limited or barred by the United States Constitution.
GW’s claims to treble damages are barred because at all times Chapterhouse has acted without malice and with a good faith belief that its actions were proper.
JURY TRIAL DEMANDED
In accordance with Federal Rule of Civil Procedure 38(b), Chapterhouse demands a trial by jury on all issues so triable.
PRAYER FOR RELIEF
Chapterhouse seeks relief as follows:
That the Court enter judgment for Chapterhouse and against GW on all causes of action; That the Court award Chapterhouse costs of suit, including attorneys’ fees; and That the Court award such other relief as is just and equitable.

Don't ask me what that means. Looks like an aggressive defense strategy with a lot of claims.

Seems that GW also made new claims on what Paulson Games has to do with this case, because the original claims are obviously false. He has to respond within a time limit and currently represents himself without an attorney.

Can't find the quote from the Warseer thread. But one poster characterized the situation that GW's bullying was too nasty even for lawyers, so they stood in line to defend CH pro bono

Interesting. So there is a counter-claim for attorney's fees and other "just and equitable" compensation.

I truly hope CH wins.

Would this generate a precendent and open the gates to other companies to begin producing not-GW more freely?

agnosto wrote:Interesting. So there is a counter-claim for attorney's fees and other "just and equitable" compensation.

I think this has more to do with even though the case is pro-bono work, they still have associated costs that they'd like to recoup, as well as costs assessed by the court. Not a lawyer though, so my guess is as good as the next person.

AvatarForm wrote:I truly hope CH wins.

Would this generate a precendent and open the gates to other companies to begin producing not-GW more freely?

Personally, I hope this causes a chain of events that will see GW lower its prices to something far more reasonable. They, while not making as much per box will make more as price will no longer be as much of a barrier for people who want to enter into the 40K (or fantasy) systems.

"GW’s claims are barred due to its unclean hands. "

I think that one was snuck in to see if anyone was actually reading this thing...

Ozymandias wrote:"GW’s claims are barred due to its unclean hands. "

I think that one was snuck in to see if anyone was actually reading this thing...

Yeah, I was trying to figure that one out.

The legal eagles will have to explain that one.

And estoppel.

Ozymandias wrote:"GW’s claims are barred due to its unclean hands. "

I think that one was snuck in to see if anyone was actually reading this thing...

I think biccat will need to explain it if it is a true statement or, as supsected, a side-ways remark.

No, it's a legal term relating to the idea that people/companies who acted in unfair ways can't expect in their turn to rely on the law of equity (fairness).

We don't know how this relates to the Chapter House case, though.

Kroothawk wrote:GW’s claims are barred due to its unclean hands.

I don't know what this one means (or indeed most of them) but I like the sound of this one

Looks like Papa Nurgle is running GW

Ozymandias wrote:"GW’s claims are barred due to its unclean hands. "
I think that one was snuck in to see if anyone was actually reading this thing...

Some answers posted on Warseer:

Thirdeye wrote:

CHaos and Evil wrote:Does that mean CHS is saying that GW's IP is no more "clean" than CHS' own IP? (Ie: Derivative)

Yes, I think that's exactly what they are saying.

weeble1000 wrote:It means GW did something wrong before Chapterhouse did. So if you and I had a contract in which you provide a good and I agree to pay you X and you sued me for breach of contract because I didn't pay you, I could respond by accusing your product of being defective. I may not have paid, but you are accusing me with unclean hands because before I didn't pay, you violated the contract by providing a defective product.

The Chaos Star comes to mind a.o.

Eldanar wrote:I hate to use Wikipedia as a legal reference, but this gives a good breakdown: http://en.wikipedia.org/wiki/Unclean_hands

Here is a simpler answer: http://www.legal-explanations.com/de...lean-hands.htm

The best thing I can think of to explain the unclean hands doctrine is when one party accuses another of something, but they then too are guilty of a similar act. Basically, it is a legal form of hypocrisy, that raises a defense to a lawsuit. Meaning, the plaintiff cannot accuse the defendant of doing something when the plaintiff has done it itself.

I will add that I wasn't going to read the Answer until later (I am trying to be productive today), but the laundry list of counter claims raised made me arch my eyebrows a little.

The counter claims also look a little snarky, in that CHS's attorneys are doing the same thing to GW that GW's attorneys did: make a bunch of broad claims without stating the basis or rationale for it. And that may be the entire point for this particular salvo.

To people wanting to read the Answer, there is not much to it, really. It is about 30 pages of CHS re-stating GW's claims, line by line, then CHS responding that it denies that particular claim. What Weeble posted above is the actual counter claim portion, and it is basically cut and pasted verbatum from the document.

rodmillard wrote:OK, I'm just going to pick out the ones I'm not sure about:

GW lacks standing to enforce copyrights it does not own - I presume they mean that if GW is complaining about infringement of Black Library works, the case should have been brought by Black Library not GW, even though they are a subsidiary company. Or possibly by the individual authors, who have signed away ALL rights to their work as a clause in their contract with GW - if that won't fly in the US, it leaves a very wide door open in the fortress wall!

GW’s claims are barred by relevant statutes of limitations... GW’s claims are barred by laches. These are both about the timing of the compaint - Statute of Limitations means that they have left it too late to pursue some (or all) claims, and Laches means that they deliberately delayed in order to cause maximum inconvenience to the defendant. I don't know how much they can exclude on that basis though.

GW’s claims are barred by consent, waiver, acquiescence or license... GW’s claims are barred by res judicata. Res Judicata means that the case has already been resolved and cannot be reopened, and consent etc is self explanatory - so are they going to argue that at some point they had GW's permission (implicit or otherwise) to produce conversion parts?

GW’s claims are barred by estoppel. There are lots of reasons for Estoppel, but it basically means that GW should be legally barred from pursuing their claims - forever. I would love to see their reasoning.

GW’s claims are barred by the doctrine of copyright misuse...GW’s claims are barred due to its unclean hands. There is a brilliant article about this here. So they are basically arguing that because GW has in the past misused copyright (either by infringing it themselves or by overreaching with their alledged IP rights in order to drive competitors out of business) they should be barred from enforcing it until such time as their record is deemed to be purged. Correct me if I'm wrong, but since this is a federal court, does that mean that if GW lose on this point they will not be able to enforce copyright anywhere in the US?!

GW’s claims are barred due to its use of the Lanham Act to impede free and fair competition... GW’s claims are barred as to any of its actions that violate any unfair competition laws. The Lanham act is the major US statute that deals with trademarks. I've pitched my tent with regard to GW's anti-competetive practises already, but are they really arguing that because GW refuses to allow fair use of trademarks, they shouldn't be allowed to penalise unfair use of them? I'm sure there's more to it than that, but again that could set a massive precedent for the industry if it goes through...

I'm sure I'll think of more questions, but its been a long day!
(...)
The listed defenses are "bare bones" because that is all W&S have to provide at this stage. They have told the judge that they intend to mount a defense on those grounds, and that's all they need to do before the hearing. I imagine we will see some more detail of the defense when they start filing motions to reject some of GW's case on those grounds, but they don't have to do that yet so why tip their hand? Only the plaintiff has a duty to disclose everything.

With a couple of exceptions I don't think any of the listed defences could block the entire complaint, so we'll just have to wait and see what survives the next stage of the process. Of course, as I said earlier if the Judge does find that GW have committed copyright misuse then all bets are off and they could be barred from enforcing copyright anywhere in the US!

GW’s claims are barred by the doctrine of copyright misuse...GW’s claims are barred due to its unclean hands. There is a brilliant article about this here. So they are basically arguing that because GW has in the past misused copyright (either by infringing it themselves or by overreaching with their alledged IP rights in order to drive competitors out of business) they should be barred from enforcing it until such time as their record is deemed to be purged. Correct me if I'm wrong, but since this is a federal court, does that mean that if GW lose on this point they will not be able to enforce copyright anywhere in the US?!

Whoops! So GW's aggressive and spurious claims over ownership or various things over the years might come back to bite them on the arse? I don't see it actually happening though, it seems to me CH or rather their lawyers, are simply throwing everything they can at GW to make them pause to address a multitude of points.

Assuming that GW were to think that they are risking too much for little gain... if they were to drop the case now what implications does that carry? I assume they can't drop the case and then take it up again later hoping that CH don't get free legal support a second time. Does a withdrawal affect their rights to enforce copyright or undermine future actions?

The unclean hands claim makes alot of sense. ALot of GW's works are dervivitive.....hell there have been threads started listing such items and where they come from.

Its getting interesting to say the least.

Kilkrazy wrote:No, it's a legal term relating to the idea that people/companies who acted in unfair ways can't expect in their turn to rely on the law of equity (fairness).

We don't know how this relates to the Chapter House case, though.

Yeah, what he said.

The defense of "unclean hands" basically says that you can't accuse someone of wrongdoing when the right violated was based on your own wrongdoing. It's basically saying "GW is unethical/acting in bad faith."

Without more, I have no idea what this relates to. Idle speculation time: perhaps CH is alleging that GW's copyrighted products are themselves infringing works, as has been pointed out earlier.

Also, on the attorney fees side, just because CH is represented pro bono, the firm can still get attorney's fees. The rationale for this is not making the defendant whole, but in punishing the plaintiff for making absurd claims.

I actually chuckled a little bit reading that response. CH pretty much threw every defense they could think of into their response.

It looks like the next thing we'll see from CH is a motion to dismiss GW's claims.

I'm not going to go through every element there, but if anyone has questions about specific defenses CH raised, I can help.

Kanluwen wrote:

Saldiven wrote:

ArbeitsSchu wrote:Or they could just sell the licenses to the damn bits and have done with it.

That, sir, makes entirely too much sense.

Actually it doesn't.

Licensing would mean, in all likelihood, that GW can't produce the parts themselves later without getting some legal snafus going on. GW would also have to 'support the licensee' in all manner of things, and I don't know what they'd be having to do in terms of quality-control.

Iteracting with a company to maintain at least some level of quality control isn't all that hard. Its entirely possible to license a product and be able to sell that same product yourself (Star Wars, Lord of the Rings etc) in one form or another, and frankly, which is going to be a cheaper legal process? Organising a contract for licensing or having to do all this ^^^ (umpty pages of thread) every time someone makes a shoulder-pad?

I would think that the unclean hands thing and the claiming copyright for things it doesn't own is related to such things as the chaos star and claiming copyright on chevrons and roman numerals which have been public domain for more than 1000 years now... They, GW, also tend to toe the fair use line as well with such characters as Kruela de evil (or however it's spelled) and we all know what the name is actually supposed to be.

I wonder if they intend to serve a C&D on the Catholic church for using latin.

agnosto wrote:I would think that the unclean hands thing and the claiming copyright for things it doesn't own is related to such things as the chaos star and claiming copyright on chevrons and roman numerals which have been public domain for more than 1000 years now... They, GW, also tend to toe the fair use line as well with such characters as Kruela de evil (or however it's spelled) and we all know what the name is actually supposed to be.

I wonder if they intend to serve a C&D on the Catholic church for using latin.

Reminds me of this;

http://www.theonion.com/articles/microsoft-patents-ones-zeroes,599/

"We will vigorously enforce our patents of these numbers, as they are legally ours," Gates said. "Among Microsoft's vast historical archives are Sanskrit cuneiform tablets from 1800 B.C. clearly showing ones and a symbol known as 'sunya,' or nothing. We also own: papyrus scrolls written by Pythagoras himself in which he explains the idea of singular notation, or 'one'; early tracts by Mohammed ibn Musa al Kwarizimi explaining the concept of al-sifr, or 'the cipher'; original mathematical manuscripts by Heisenberg, Einstein and Planck; and a signed first-edition copy of Jean-Paul Sartre's Being And Nothingness. Should the need arise, Microsoft will have no difficulty proving to the Justice Department or anyone else that we own the rights to these numbers."

Enlarge ImageGates explains the new patent to Apple Computer's board of directors.

Added Gates: "My salary also has lots of zeroes. I'm the richest man in the world."



The Onion has its moments.

Ok, this link I'm about to post is not directly related to this GW vs CHS case. The only reason I'm posting it is because I think it does have an interesting tangential relationship.

Mattel sued the makers of the Bratz dolls over a variety of IP issues. Mattel is the big boy on the block in the doll industry. Mattel has lost the case, and the jury deemed the actions Mattel took in filing the suit to be malicious in nature. Check out the size of the jury award and the potential size of the punitive award that the judge could impose upon Mattel.

I think it's possible that CHS might be able to use this type of thing as a precedent in their claims against GW if CHS decides to pursue a malicious litigation route.

http://finance.yahoo.com/news/Jury-rejects-Mattels-Bratz-apf-3344046520.html?x=0

I repeat: I am aware that this case doesn't relate directly to the GW vs CHS case; I'm merely bringing it up to show how the small defendant can get an absolutely massive win against the giant corporation.

Saldiven wrote:Ok, this link I'm about to post is not directly related to this GW vs CHS case. The only reason I'm posting it is because I think it does have an interesting tangential relationship.

Mattel sued the makers of the Bratz dolls over a variety of IP issues. Mattel is the big boy on the block in the doll industry. Mattel has lost the case, and the jury deemed the actions Mattel took in filing the suit to be malicious in nature. Check out the size of the jury award and the potential size of the punitive award that the judge could impose upon Mattel.

I think it's possible that CHS might be able to use this type of thing as a precedent in their claims against GW if CHS decides to pursue a malicious litigation route.

http://finance.yahoo.com/news/Jury-rejects-Mattels-Bratz-apf-3344046520.html?x=0

I repeat: I am aware that this case doesn't relate directly to the GW vs CHS case; I'm merely bringing it up to show how the small defendant can get an absolutely massive win against the giant corporation.

I'm honestly not seeing the correlation.

After reading through, the whole crux of the matter is that the Bratz designer worked for Mattel when he came up with the idea and that MGA 'interfered' with contractual obligations.

There's one bit from there that raises a "Seriously? The judge let this happen?" flag.

Mattel attorneys blamed Larian for poisoning the jury with his testimony, including statements he made that Mattel's lawsuit caused the stress that killed his father, and that doll designer Bryant had a stroke after a day of grueling testimony. That kind of testimony was not allowed in the 2008 trial, they said, and Mattel prevailed.

Can any of the lawyers explain why that would have been allowed this time, but not in the 2008 trial?

A lot of us have talked about GW playing the part of the bully here. Since Chapterhouse is so small that they really can't afford to go to court themselves, it looks a lot like GW is trying to put them out of business by making them pay legal fees. In the US, both sides in a case have to pay their own way (you can sue for court fees if you won your case).

Using the court system's cost to bully other companies can be unethical- especially if they show up with no plausible case whatsoever. Punitive damages are designed to punish corporations for doing things that are unethical. CHS would have to sue for punitive damages here (and so far they haven't) but it is a possibility.

They are based on the size of the corporation being punished (not the plaintiff). So, when McDonalds has to pay punitive damages, they're always huge sums, but when your local grocer has the same problem, it isn't all that much.

Since Mattel is a larger corporation than Games Workshop, the sum can't get as high in this case. Punitive damages can be enormous sums, but they'll never be so much that a corporation cannot pay them.

Kanluwen wrote:I'm honestly not seeing the correlation.

After reading through, the whole crux of the matter is that the Bratz designer worked for Mattel when he came up with the idea and that MGA 'interfered' with contractual obligations.

Could be based on the damage to the company ($800M to $50M in gross sales) for the lawsuit. But it also appears that Mattel engaged in some shenanigans of their own.

You're right, it's probably not relevant, unless GW actually infringed some of CHS's copyrights.

Kanluwen wrote:There's one bit from there that raises a "Seriously? The judge let this happen?" flag.

Mattel attorneys blamed Larian for poisoning the jury with his testimony, including statements he made that Mattel's lawsuit caused the stress that killed his father, and that doll designer Bryant had a stroke after a day of grueling testimony. That kind of testimony was not allowed in the 2008 trial, they said, and Mattel prevailed.

Can any of the lawyers explain why that would have been allowed this time, but not in the 2008 trial?

Looks like Mattel would have objected to this on the grounds that it isn't relevant - specifically that the prejudicial nature of the testimony would outweigh its probative value. Such a decision is a judgment call on the part of the judge, and the judge probably went the other way this time around (the case was decided then appealed to the 9th circuit who reversed for a new trial).

Also, if MGA had alleged (this time through) loss of business or other damages for Mattel's malicious suit, this information may be relevant this time around, even if it wasn't relevant as to the copyright infringement claim before.

So, the discovery period is now over and CHS/W&S feel they have enough evidence of 'bad faith' to drag GW through the court process. Why do I have a vision of "The Rainmaker" going through my head. (For non Grisham fans, its a sole laywer suing the insurance industry)

I very much doubt that the "bright spark" at GW who started all this though that this would happen.

One thing I did notice in the opinions elsewhere is that this judgement will only affect the US, not the UK. So that means we still get overpriced plastic with no, local, third party service.

Cheers

Andrew

If GW should lose big time it would probably discourage them from taking a similar suit against a UK based company.

The judge in such a case would be within his rights to have regard to the US court decision. He might consider it a waste of time to rehash arguments concerning trademarks which had already been fully ventilated in the US court.

If GW loses, they will be drowned in Space Marine sales for all those custom shoulder pads, tough luck

Kirasu wrote:Sucks how the usual anti-bullying tactic of "punch him in the mouth" doesnt work when the bully is an abrams tank and you're a guy with only your fists

Doesnt the UK have anti-bullying laws??! Just claim each of these small companies is one of the precious snowflakes that needs protection

Tiannamen Square 1989 says otherwise.

One man with a hankerchief held up three battletanks of the People's Army.

Sometimes you just have to have guts.


Maybe they'll think twice before going after fan-based websites now. You cannot talk about something without using its name.

xraytango wrote:One man with a hankerchief held up three battletanks of the People's Army.

I know that this is off topic, but I wonder what ever happened to him?

Andrew

The discovery period is not over yet. I think discovery is everything between pleading and trial. Judge Kennelly required Games Workshop to respond to early discover, as in discovery prior to pleading. This is normally not allowed.

AndrewC wrote:

xraytango wrote:One man with a hankerchief held up three battletanks of the People's Army.

I know that this is off topic, but I wonder what ever happened to him?

Andrew

Sadly, many contend he was shot a couple weeks after.

Regardless, I hope CHS wins---but one small financial institution---fighting a larger financial institution over profits <> the Tank Man.

/It was 4 tanks

Parts and conversion bits are one thing, but given that CH appear to have now moved into just making full and complete GW models, methinks that at least in part GW might yet pull back a win.

Why do people think chapterhouse is "ahead" as far as the legal proceedings go? Can someone give me an abridged version, I'm curious but I'd rather not wade through 17 pages...

Basically, GW is trying to keep their claims as broad as possible, and in doing so are hurting their case. As far as I understand, copyright lawsuits need to be very very specific as to exactly what is being infringed, but GW isn't getting to the needed level of specificity. Even with quite specific claims, CHS seems to be in a defendable position.
Furthermore... GW needs to end this as quick as they can, because they're paying. CHS isn't, so they can keep going as long as they want.

This is all great publicity for CHS. I wonder if I could persuade GW to sue Precinct Omega?

R.

I wonder if CH's expansion into the market of writing official fan-fiction to sell models changes anything... Fanfiction is always illegal but often ignored, but when it is used to sell a model as an official GW character in the GW universe using GW imagery and IP to sell it, this seems like the very thing GW is trying to prove is now all wrapped up into one brand new product.

RiTides wrote:Why do people think chapterhouse is "ahead" as far as the legal proceedings go? Can someone give me an abridged version, I'm curious but I'd rather not wade through 17 pages...

Its as Travsi said, but further- the judge, showing his dipleasure, forced GW to disclose first, which as some of the lawyers in the thread points out is not in GW's favor.

Trasvi wrote:Furthermore... GW needs to end this as quick as they can, because they're paying. CHS isn't, so they can keep going as long as they want.

Why is GW paying but not Chapterhouse? Both sides have to pay their legal expenses, right?

RiTides wrote:Why is GW paying but not Chapterhouse? Both sides have to pay their legal expenses, right?

CH's lawyers are pro bono, GW isn't so lucky.

CH have got someone Pro Bono (free) for whatever reason.

I do not think that GW will be ruing the fact that they are paying for their defence. Hard to believe that they would start something and not either know or afford where it is going.

I appreciate allot of people contend that GW are stupid, have a poor business model, etc, but they are a reasonable well regarded company that has be trading well in poor market conditions. Knowing that they may have to follow through with a court case that they started will not come as a surprise to them.

I look forward to further developments.

Kirbinator wrote:

RiTides wrote:Why is GW paying but not Chapterhouse? Both sides have to pay their legal expenses, right?

CH's lawyers are pro bono, GW isn't so lucky.

Lucky?) I'd much rather pick my lawyer than take what I can get for free.

notprop wrote:
I do not think that GW will be ruing the fact that they are paying for their defence. Hard to believe that they would start something and not either know or afford where it is going.

While I agree they can afford it, its looking more and more like they thought they were the 800 pound gorilla in this case with lawyers, going up against some poor schmuck....And turns out that their growl and take'em to court isnt working so well when CHS had found their own gorilla to match up with. So far, it looks like a big miscalculation on GW part, their case was much more scare tactics then substance. Thats not to say that GW's case might not have merit, however at this stage I think they were more saber rattling then actual case.

I appreciate allot of people contend that GW are stupid, have a poor business model, etc, but they are a reasonable well regarded company that has be trading well in poor market conditions. Knowing that they may have to follow through with a court case that they started will not come as a surprise to them.

Given how the judge has ruled so far, I think it has come to more then a bit of a suprise to GW and lawyers that they actually have to have a case instead of scaring some small time company.

I look forward to further developments.

Same here.

mikhaila wrote:

Kirbinator wrote:

RiTides wrote:Why is GW paying but not Chapterhouse? Both sides have to pay their legal expenses, right?

CH's lawyers are pro bono, GW isn't so lucky.

Lucky?) I'd much rather pick my lawyer than take what I can get for free.

Go back a few pages, the firm that is representing CH is very reputable with several experts in the field; in fact their primary counsel is well published on similar matters. As has been put forth in this thread, the firm is probably pushing to set a precedent which is why they took the case.

nkelsch wrote:I wonder if CH's expansion into the market of writing official fan-fiction to sell models changes anything... Fanfiction is always illegal but often ignored, but when it is used to sell a model as an official GW character in the GW universe using GW imagery and IP to sell it, this seems like the very thing GW is trying to prove is now all wrapped up into one brand new product.

I'm sure that CH would not have released their new product, without first consulting with their Lawyers. So, it's a safe bet that it will not be an issue.

Sasori wrote:

nkelsch wrote:I wonder if CH's expansion into the market of writing official fan-fiction to sell models changes anything... Fanfiction is always illegal but often ignored, but when it is used to sell a model as an official GW character in the GW universe using GW imagery and IP to sell it, this seems like the very thing GW is trying to prove is now all wrapped up into one brand new product.

I'm sure that CH would not have released their new product, without first consulting with their Lawyers. So, it's a safe bet that it will not be an issue.

I would hope so. If they didn't, I have a feeling their lawyers may be having a heated discussion with them shortly....

Unfortunately, it's a problem with US copyright law that it's not always a good idea to consult with an attorney before engaging in potentially infringing activities.

Without asking your lawyer:
D "Your honor, we honestly never thought that what we did was infringing"

With asking your lawyer:
D "Your honor, we honestly never thought that what we did was infringing"
J "If you didn't think it was infringing, why did you go to your lawyer"
D "Um...."

They should have been more generic. But they decided to be ballsy.. so I await the outcome. If GW win the case they will be 'crushing the little guy' so it will be negative PR, (just when we thought GW could sink no lower!) If they loose I think we will need clearer guide lines as to what is permissable.

Errr....how would the Judge know precisely what was discussed at the Lawyers Office? Do they record all legal counsel or something?

Over here, I'm pretty sure you just ring your lawyer, and say you want to talk about something, he says, 'Ooookay, that'll be £345756 an hour', and he tells you what he thinks about the affair from behind his desk. The Judge has no way of knowing the contents of all the legal counsel you've had.

biccat wrote:Unfortunately, it's a problem with US copyright law that it's not always a good idea to consult with an attorney before engaging in potentially infringing activities.

Without asking your lawyer:
D "Your honor, we honestly never thought that what we did was infringing"

With asking your lawyer:
D "Your honor, we honestly never thought that what we did was infringing"
J "If you didn't think it was infringing, why did you go to your lawyer"
D "Um...."

Isn't stuff like that covered by Attorney-client privilege?

I don't understand how a Judge could find out.

I hope it does get dismissed. Im not up in the know of law, or do i know much about chapter house if im honest but to me i cant see the difference in what chapter house do to what commissoned convertes/painters do. Yes CH have a range of stuff they can make FOR GW products and with exeption of full kits you still need to buy the 40k product to use it so GW aint losing anything. If GW had (first thing i saw on CH web site) a heresy armoured drop pod door then fine its a rip off and a +1 toGW but they dont so in all honesty i dont think GW are right to take them to cour without taking every other converter/parts maker to court.

One rule for one and another for another isnt how the world works these days.

gloomygrim wrote:
I hope it does get dismissed. Im not up in the know of law, or do i know much about chapter house if im honest but to me i cant see the difference in what chapter house do to what commissoned convertes/painters do. Yes CH have a range of stuff they can make FOR GW products and with exeption of full kits you still need to buy the 40k product to use it so GW aint losing anything. If GW had (first thing i saw on CH web site) a heresy armoured drop pod door then fine its a rip off and a +1 toGW but they dont so in all honesty i dont think GW are right to take them to cour without taking every other converter/parts maker to court.

One rule for one and another for another isnt how the world works these days.

And that is all fine and well, but CH have just decided to release a whole miniature (and IMO not a very good one) which requires no GW purchase and obviously uses GW trademarks etc etc. Its not debatable, or using things that are common, like chevrons and skulls. Its a straight-up usage. Seems they intend to do more as well.

But surely to convert the mini, you have to buy it from GW first?

So what is the problem? As has been said before on this thread, it might well be all about the IP.

But GW must have stolen some IP from other's before now?

They should not have a monopoly on the whole sci-fi/fantasy universe.

Or do they?

sarpedons-right-hand wrote:But surely to convert the mini, you have to buy it from GW first?

So what is the problem? As has been said before on this thread, it might well be all about the IP.

But GW must have stolen some IP from other's before now?

They should not have a monopoly on the whole sci-fi/fantasy universe.

Or do they?

The new Model doesn't require anything.


I don't understand how the Farseer model is different from the Super Heavy Walker.

They are both modeled after the IP. The Farseer is a bit more blatant though. But of course, it is quite possible their lawyers gave the Signal. We can't know this for sure, but I think the last thing CH would do in the middle of a Lawsuit, would release something that could compromise their case.

To quote myself from elsewhere...

The simple fact is though, when it comes to say, a shoulder pad with a burning chalice on, GW has a lot of difficulty saying other people shouldn't be allowed to make stuff like that. They don't own the shape of the shoulder pad (it would be bizare to claim they own a shape- It would be like me trying to claim a circle is my intellectual property), the chalice is an ancient symbol, and therefore clearly in the public domain, and a chalice on fire is just simply crossing two public domain concepts.

The result being CH makes a shoulderpad entirely compatible with a GW space marine, that happens to be the symbol of an obscure chapter in the fluff.

Things like this make it very difficult for GW to find a leg to stand on. This principle can be applied to to other things CH make, for example, a Salamander rhino door.

The shape is public domain. A dragon head is public domain. So what part of it is owned by GW?

They can attempt to say that he says its compatible with a GW rhino in the description, but there's a sort of precedent for that already, as I mentioned above. As long as the product name is 'Dragon Door 27#' and its all made up of entirely generic concepts, GW don't really have a leg to stand on.

Female Cadians? What? No, they're female space troopers! Boneswords? That's not GW specific IP, its public domain! Space wolf land raider doors? Rubbish, its a Cyber-Werewolf scenery set!


The new 'Doomseer' kind of is tripping dangerous territory though, simply because its so very similar to the GW aesthetic, in style and name, GW may not only be able to say that it could be mistaken for one of their products, but the general design has clearly been copied as well.

Sasori wrote: We can't know this for sure, but I think the last thing CH would do in the middle of a Lawsuit, would release something that could compromise their case.

But they might if they realised that GW did'nt have a leg to stand on. In which case, why not? *shrugs*

Sasori wrote:

biccat wrote:Unfortunately, it's a problem with US copyright law that it's not always a good idea to consult with an attorney before engaging in potentially infringing activities.

Without asking your lawyer:
D "Your honor, we honestly never thought that what we did was infringing"

With asking your lawyer:
D "Your honor, we honestly never thought that what we did was infringing"
J "If you didn't think it was infringing, why did you go to your lawyer"
D "Um...."

Isn't stuff like that covered by Attorney-client privilege?

I don't understand how a Judge could find out.

Someone with more law experience can explain it better, but you cant go to a lawyer and ask them how best to break the law, or some such like that.

Excerpted:

Other limits to the privilege may apply depending on the situation being adjudicated; for instance, the crime-fraud exception can render the privilege moot when communications between an attorney and client are themselves used to further a crime or fraud. In Clark v. United States, the US Supreme Court writes that "A client who consults an attorney for advice that will serve him in the commission of a fraud will have no help from the law. He must let the truth be told."[7] The crime-fraud exception also does require that the crime or fraud discussed between client and attorney be carried out to be triggered.[8] US Courts have not yet conclusively ruled how little knowledge an attorney can have of the underlying crime or fraud before the privilege detaches and the attorney's communications or requisite testimony become admissible.[9]

carmachu wrote:I don't understand how a Judge could find out.

Someone with more law experience can explain it better, but you cant go to a lawyer and ask them how best to break the law, or some such like that.

Excerpted:

Other limits to the privilege may apply depending on the situation being adjudicated; for instance, the crime-fraud exception can render the privilege moot when communications between an attorney and client are themselves used to further a crime or fraud. In Clark v. United States, the US Supreme Court writes that "A client who consults an attorney for advice that will serve him in the commission of a fraud will have no help from the law. He must let the truth be told."[7] The crime-fraud exception also does require that the crime or fraud discussed between client and attorney be carried out to be triggered.[8] US Courts have not yet conclusively ruled how little knowledge an attorney can have of the underlying crime or fraud before the privilege detaches and the attorney's communications or requisite testimony become admissible.[9]

What I'm saying though, I don't think the lawyers would have disclose anything if the conversation went something like this:

CH:"If I release this model for sale, with this description, would it hurt my case, and be against the IP law?"

I don't see how it would be illegal(Or would have to be disclosed from CHs Lawyers) for CH to ask those kind of questions. They wouldn't be doing anything to violate the law until it went on sale, right?

I would love for someone like Biccat, or one of our other lawyers to help enlighten us on this new development in the ongoing legal situation.

ArbeitsSchu wrote:

And that is all fine and well, but CH have just decided to release a whole miniature (and IMO not a very good one) which requires no GW purchase and obviously uses GW trademarks etc etc. Its not debatable, or using things that are common, like chevrons and skulls. Its a straight-up usage. Seems they intend to do more as well.

Certainly interesting. I want CH to succeed and stay in business, I assume their lawyers are aware of their latest models because it could hurt their argument for fair use if it looked like they were taking the piss.

However from my viewpoint, two things have to be considered here.

Firstly discovery has been completed/laid out. As far as I am aware, and I admit thats not far, only what has been established in that discovery can be used in the court case. CHS can dance naked down the street claiming to be a Daemonhost and GW can't include it in the court case. So what they have released is relatively safe. Unless GW raises a seperate action over it.

Secondly, I don't believe the GW has ever released a model of a female farseer, or even a drawing of one. So IIRC there is a freedom of expression allowed, CHS has sculpted a three dimensional representation of a literary figure. IE if someone sculpted a DaVinci 'David' using nothing but a written description of it then they are safe from prosecution. So I think they're on safe ground there.

However someone else on this thread raised a thought that I asked about earlier. If GW is claiming that they and only they have the right to profit from their IP, does that not mean that any painter contracted to paint an army, for simplicitys sake lets say UltraMarines, does that not mean they have broken the law and infringing on GWs IP?

Cheers

Andrew

Havent read all 18 pages but suprised fox hasent sent a C&D over the xenomorph heads. Those are alot more line blurring compared to a shoulder pad.

AndrewC wrote:However from my viewpoint, two things have to be considered here.

Firstly discovery has been completed/laid out. As far as I am aware, and I admit thats not far, only what has been established in that discovery can be used in the court case. CHS can dance naked down the street claiming to be a Daemonhost and GW can't include it in the court case. So what they have released is relatively safe. Unless GW raises a seperate action over it.

Secondly, I don't believe the GW has ever released a model of a female farseer, or even a drawing of one. So IIRC there is a freedom of expression allowed, CHS has sculpted a three dimensional representation of a literary figure. IE if someone sculpted a DaVinci 'David' using nothing but a written description of it then they are safe from prosecution. So I think they're on safe ground there.

However someone else on this thread raised a thought that I asked about earlier. If GW is claiming that they and only they have the right to profit from their IP, does that not mean that any painter contracted to paint an army, for simplicitys sake lets say UltraMarines, does that not mean they have broken the law and infringing on GWs IP?

Cheers

Andrew

They also claim that no-one is allowed to convert stuff or combine genres/universes.

Guess I'm damned then...




Automatically Appended Next Post:
Ooops! I am being a very naughty boy going off topic.

AndrewC wrote:

Secondly, I don't believe the GW has ever released a model of a female farseer, or even a drawing of one. So IIRC there is a freedom of expression allowed, CHS has sculpted a three dimensional representation of a literary figure. IE if someone sculpted a DaVinci 'David' using nothing but a written description of it then they are safe from prosecution. So I think they're on safe ground there.


Andrew

That's like saying just because there wasn't a Wookie Jedi portrayed that writing a book about one wouldn't be treading on Lucasarts's IP rights.

Vaktathi wrote:That's like saying just because there wasn't a Wookie Jedi portrayed that writing a book about one wouldn't be treading on Lucasarts's IP rights.

However, Lucasarts have better IP lawyers that GW and protected against just that thing. Even then, it's not perfect. Could I write a book about a sword weilding gorilla who fights for the poor and needy? Too right I can. Parody is a wonderful thing. Bored of the Rings, Barry Trotter and the Shameless Parody.

Cheers

Andrew

AndrewC wrote:

Vaktathi wrote:That's like saying just because there wasn't a Wookie Jedi portrayed that writing a book about one wouldn't be treading on Lucasarts's IP rights.

However, Lucasarts have better IP lawyers that GW and protected against just that thing. Even then, it's not perfect. Could I write a book about a sword weilding gorilla who fights for the poor and needy? Too right I can. Parody is a wonderful thing. Bored of the Rings, Barry Trotter and the Shameless Parody.

Cheers

Andrew

CH is not performing parody, or even attempting to as they are using official GW terms as well as names and places that are unique to GWs IP.

There is a worlds difference between a " a gorilla psychic energy sword master of plaptoine the desert planet" and "Jedi Wookie light saber master of tatooine." the model may look similar and customers can connect the dots, but connecting the dots and pretending to be official Star wars universe will get you nuked, as it should.

Other companies can get by with WWII orcs and robowolf mounts, then CH could have gotten by with "near seeing space elf" and avoiding the official fluff.

I fail to see how the 'worlds difference between a " a gorilla psychic energy sword master of plaptoine the desert planet" and "Jedi Wookie light saber master of tatooine' does not apply to a 'Eldar farseer' and an 'Elvish Doomseer'.

Ketara wrote:I fail to see how the 'worlds difference between a " a gorilla psychic energy sword master of plaptoine the desert planet" and "Jedi Wookie light saber master of tatooine' does not apply to a 'Eldar farseer' and an 'Elvish Doomseer'.

Because they are using faraday and other GW terms to sell the doomseer

"Doomseer Iyanar-Duanna is cursed with the ability to forsee the slow death of her race. She shares the ability of all seers, to see the path of her race, but is only able to see the deaths of her people and nothing else. She was psychically scarred when she witnessed the death of an entire world-ship, she is now doomed to spend every moment of her life tracking down the creature responsible."


That's from the CH website. It doesn't appear to infringe on anything, to me at least.

Sasori wrote:"Doomseer Iyanar-Duanna is cursed with the ability to forsee the slow death of her race. She shares the ability of all seers, to see the path of her race, but is only able to see the deaths of her people and nothing else. She was psychically scarred when she witnessed the death of an entire world-ship, she is now doomed to spend every moment of her life tracking down the creature responsible."


That's from the CH website. It doesn't appear to infringe on anything, to me at least.

It WAS the following and they have since changed it...

"doomseer Iyanar-Duanna is cursed with the ability to forsee the slow death of her race. She shares the ability of all farseers to see the paths of her race, but is only able to see the deaths of her people and nothing else. She was psychically scarred when she witnessed the death of the people of Malantai, she is now doomed to spend every moment of her life tracking down the creature responsible."

It was setting up an official GW Farseer IP character to fight the Official GW Doom of Malantai Ip Character model CH is making. I bet CH's firm loves having a responsible client who likes to poke the bear while in the middle of a legal battle. Should have stuck with space elf fights brainbug...

Anyone who was attempting to be reasonable would have left out the direct references to GW IP the first time... And no one would have blinked. I am unsure why this is hard to grasp.

Chapterhouse studios models aren't that good TBH. I don't like the high GW prices and i see little wrong with what Chapterhouse Studios is doing, there just not very good.

stonned_astartes wrote:Chapterhouse studios models aren't that good TBH. I don't like the high GW prices and i see little wrong with what Chapterhouse Studios is doing, there just not very good.

I believe that is one of the reasons why GW have a stick up their collective about it all. Its one thing if someone steals your IP and turns out amazing top-quality brilliance, or things you should have released yourself but somehow failed to do, that are high quality...but when someone pinches your IP and churns out rubbish, it gets associated with your IP, which is bad for business, and devalues what you are doing. And GW have enough trouble with their in-house uglies without getting associated with someone elses.

.

nkelsch wrote:CH is not performing parody, or even attempting to as they are using official GW terms as well as names and places that are unique to GWs IP.

There is a worlds difference between a " a gorilla psychic energy sword master of plaptoine the desert planet" and "Jedi Wookie light saber master of tatooine." the model may look similar and customers can connect the dots, but connecting the dots and pretending to be official Star wars universe will get you nuked, as it should.

Other companies can get by with WWII orcs and robowolf mounts, then CH could have gotten by with "near seeing space elf" and avoiding the official fluff.

But therein lies a problem, GW doesn't own the use of terms, in the same way that car makers don't own their car model names, in the sense that stops others from using them in adverts or for descriptive purposes*, or why "Ipod" can't stop people selling Ipod covers or the prevalence of second party Wii controllers. Something that is compatable is not illegal.

Using Lucasarts is comparing apples to oranges. When the films came out, there was a spate of third party books using the SW world, 'Splinter in Minds Eye' springs to mind for some reason. Guess what, when Lucas saw the stuff selling he went to court, just like GW is, but unlike Lucas, GW is generic SciFi and a knock off of half a dozen different sources. Rogue Trader was a parody, the amount of in-jokes was exceptional.

To put it another way, this isn't a question of whats right or wrong, but of whats legal or illegal.

As to why other companies use WWII orcs etc, watch this space if the court case goes CHS' way. Other companies didn't use them because they were scared of being sued. CHS decided they weren't going to be scared. nor beat about the issue, and so used terms that were clear, concise and delineated exactly what they should be used for.

Cheers

Andrew

*calling your own car by the same name is a different matter, ie Ferrari & Ford

AndrewC wrote:
But therein lies a problem, GW doesn't own the use of terms, in the same way that car makers don't own their car model names, in the sense that stops others from using them in adverts or for descriptive purposes*, or why "Ipod" can't stop people selling Ipod covers or the prevalence of second party Wii controllers. Something that is compatable is not illegal.

But this time they were not doing this.

You can sell a case for IPOD but cannot sell an IPOD.

They were not selling conversion part for A Farseer, they were selling a "Farseer directly existing in the warhammer 40k universe" until they changed it.

Also they were selling GW's IP. The 'fluff' used to promote the figure was GW's IP and using GW's IP to increase sales of their figure by placing it directly in GW's universe to make it seem more official. This was the same as when people were trying to make official Blood Bowl Characters instead of generic fantasy football figures. I also disagree that GW's universe is as diluted IP as you claim it is. It is pretty established and unique in its modern form. Almost all fantasy has directly from Tolkien, doesn't mean that fantasy IPs are indefensible and impossible to infringe upon. I do not see the 'DOOMSEER' as an unrealted generic space universe coming to similar results from similar source materials. That model is based off GW IP. The extensive eldar IP is unique and owned by GW and is just as defensible as Star Wars.

If they felt they *WERE* legal with the whole referencing GW for add on parts, then making official GW characters in the GW universe using GW IP to promote and sell it seems like a step in the wrong direction. Obviously *SOMEONE* thought they were wrong if they quickly changed it. This just goes to pattern of behavior and shows that if GW isn't vigilant that CH will continue to infringe more and more until they are selling officially named GW 40k models.

There is a reason everyone else is not being sued. CH has brought everything they have done upon themselves because they choose to continue to find the line and try to push it for personal profit. CH could have avoid this by staying away from GW IP and just making their same models as generic minis.

As to why other companies use WWII orcs etc, watch this space if the court case goes CHS' way. Other companies didn't use them because they were scared of being sued. CHS decided they weren't going to be scared. nor beat about the issue, and so used terms that were clear, concise and delineated exactly what they should be used for.

This is the critical issue. If the ruling goes to CHS, then the floodgates are essentially thrown open, making it much, much harder for GW to enforce clamp downs on third parties making use of their IP.

R.

Ketara wrote:

carmachu wrote:I don't understand how a Judge could find out.

Someone with more law experience can explain it better, but you cant go to a lawyer and ask them how best to break the law, or some such like that.

Excerpted:

Other limits to the privilege may apply depending on the situation being adjudicated; for instance, the crime-fraud exception can render the privilege moot when communications between an attorney and client are themselves used to further a crime or fraud. In Clark v. United States, the US Supreme Court writes that "A client who consults an attorney for advice that will serve him in the commission of a fraud will have no help from the law. He must let the truth be told."[7] The crime-fraud exception also does require that the crime or fraud discussed between client and attorney be carried out to be triggered.[8] US Courts have not yet conclusively ruled how little knowledge an attorney can have of the underlying crime or fraud before the privilege detaches and the attorney's communications or requisite testimony become admissible.[9]

But that still doesn't answer the question....how would you ever find out?

And I would imagine its not illegal to discuss how to circumvent the law, otherwise all those tax dodging corporations would never be able to talk to their lawyers and accountants about how to best funnel all their money through offshore accounts.

As in most instances, it is not the attorney divulging this information; usually it is the client, who at some point made a comment or a reference to someone else about what was said, etc. The other side then finds out about this somehow. As soon as the client discusses privileged information with a person who does not have those protections (or others, like say a spouse), then the privilege is generally lost. I do not think that is what happened here.

CHS has for months been saying that he obtained legal counsel prior to and during production, etc. Quite often parties involved in these actions will also raise this as a defense in the preliminary stages before there is any serious legal action involved. It could have been as simple as Party A calling Party B on the phone and saying you are infringing on our product; then Party B responds, "I consulted with my attorney and that is not what he/she said..." (Although to be fair, what the attorney actually said, and what the client superimposed the attorney as saying, may be two completely different things all together).

Simply making that statement wouldn't necessarily eviscerate any privilege; however, if the client goes further beyond that and starts discussing specifics, then they set up a slippery slope that ultimately could lead to problems. Particularly if they want to continue to use that attorney in a legal proceeding.

In the current matter, I imagine that it is common knowledge to the judge and GW that CHS has had some sort of discussions with attorneys ahead of time. How much of those discussions are known or have been divulged, we don't know. That is a potential discovery issue (barring any privilege that CHS might want to assert). And too, CHS might actually want what was discussed to be divulged, as long as CHS's actions were in complete conformity to what the previous attorney advised.

Interesting that they have changed the copy.

Still, it has been changed and if it infringed before, it no longer does.

Like AndrewC, I don't have a strong commitment to these concepts of fndamental right and wrong ideas which a lot of people are concerned with. That's partly because working in a creative industry I am au fait with the great amount of derivation that goes on.

I am not convinced that "original" is necessarily good. A fair bit of original crap is produced. I am more interested in good re-implementations of existing ideas.

Kilkrazy wrote:They also claim that no-one is allowed to convert stuff or combine genres/universes.

Guess I'm damned then...
Ops! I am being a very naughty boy going off topic.

From what I understood from the speil as a layman is that they would prefer that you don't, but they won't chase anyone that is doing so for personal puposes.

What's changed? I have obviously missed the piece that is being discussed currently, and can't find it in this massive thread. Is the case looking like it will drag on or is it going to be closed out relatively quickly (for legal cases)? Again I would like to say thanks to the legal types who have been offering insights that the rest of us would have missed.

If you look at their legal page, GW forbids people to mix universes. It's true they don't go after private individuals for doing it. I don't know whether GW actually have the legal right to stop people from cutting stuff up and bunging it together in new and interesting ways for personal use.

The Doomsayer description used to say she was a farseer who suffered anguish from the Doom of Malantai. It has been changed to call her a seer who suffered anguish from the death of a world-ship.

In other words it no longer mentions any GW specific names except Eldar.

Ahh, I get it. A headline grab and then scuttle under a rock job squeaking 'I didn't know mr lion, but I've made it ok now...!'

Meh, it strikes me that CHS are being deliberately like an extremely beligerant mouse, with no chance of them playing the straight game at all. These stupid games get my goat, and wastes everyones time. Did they really have to do it? Was it really wirth the effort? Is the Judge not going to look at this in a negative light, considering the timing? Prudence would be to stay quiet in my eyes, but what the heck eh?

An alternative scenario is that whoever updated the website hadn't got the copy cleared for release and pushed the upload button by mistake. Horrorstruck, the directors of Chapter House took down the offending copy as soon as they noticed the error.

Either way, the Doomsayer is not part of the suit, so the judge presumably will ignore it.

Given their history and the current situation they find themselves in I can't believe this is anything more than another stunt. At the end of the day CHS isn't a big company, and I can't believe that they would be daft enough to write the offending material up without intent. My veiw maybe very myopic, but all I can see at the end of this is further justification for the action to take place. I would be very unsurprised if council didn't have a few choice words when it did go up

People do make mistakes, some also like to tweak the lions tale. Some don't make it back whole and some get away, but is that really a risk worth taking?

Kilkrazy wrote:If you look at their legal page, GW forbids people to mix universes. It's true they don't go after private individuals for doing it. I don't know whether GW actually have the legal right to stop people from cutting stuff up and bunging it together in new and interesting ways for personal use.

The only reason that is on their website is to protect themselves. It's there to prevent, say Lucasarts, from suing GW corporate because some guy is selling Darth Vader Space Marines on eBay. No one at GW honestly would care.

The line doesn't actually do a whole lot, legal wise, but it just shows that they do not officially support it as a company.

We need to see the result of the court case before we can take away any proper learnings.

nkelsch wrote:You can sell a case for IPOD but cannot sell an IPOD.

But you can sell something identical in purpose and technology, just not the same name.

Also they were selling GW's IP. The 'fluff' used to promote the figure was GW's IP and using GW's IP to increase sales of their figure by placing it directly in GW's universe to make it seem more official.

Firstly, you're right, they used a literary reference in a literary context. They shouldn't have.

This was the same as when people were trying to make official Blood Bowl Characters instead of generic fantasy football figures.

Sorry. but while I agree with the premise, I disagree with the intent. The BB Charade was GW at its' best handing out legal threats on all sides against 'lightweights', and I don't mean that disparagingly, who were not in a position to stand up for themselves legally.

I also disagree that GW's universe is as diluted IP as you claim it is. It is pretty established and unique in its modern form.

This is where the 'unclean hands' defence seems to be kicking in. It doesn't matter how you reach a specific point, but how you got there. Here's a really good lie to explain it. I steal a car and drive it away and keep it. Someone then crashes into it, I can't sue them for damages/compensation because I shouldn't have had the car in the first place. GW's Rogue Trader is/was a parody. (The stolen car) It was then established over 5 editions. (I keep it) CHS sells products relating to it. (The car crash!)

Almost all fantasy has directly from Tolkien, doesn't mean that fantasy IPs are indefensible and impossible to infringe upon. I do not see the 'DOOMSEER' as an unrealted generic space universe coming to similar results from similar source materials. That model is based off GW IP. The extensive eldar IP is unique and owned by GW and is just as defensible as Star Wars.

Tolkien stole his from earlier works as a matter of interest. Why do you draw the line at Doomseer but not at Cyberwolves? Genuinely interested to hear you answer, because both 'infringe' in the same way but you can accept one but not the other.

If they felt they *WERE* legal with the whole referencing GW for add on parts, then making official GW characters in the GW universe using GW IP to promote and sell it seems like a step in the wrong direction. Obviously *SOMEONE* thought they were wrong if they quickly changed it. This just goes to pattern of behavior and shows that if GW isn't vigilant that CH will continue to infringe more and more until they are selling officially named GW 40k models.

I don't think even CHS would go that far, but as long as GW only has a literary reference for an item, and CHS use it to produce a 3d model of it, then I see nothing illegal about it. Refering you to the earlier statement about freedom of expression between mediums.

There is a reason everyone else is not being sued. CH has brought everything they have done upon themselves because they choose to continue to find the line and try to push it for personal profit. CH could have avoid this by staying away from GW IP and just making their same models as generic minis.

Everyone else decided to play it very conservative because they were afraid. Look at it this way, if CHS had not got ProBono, would we be having this discussion? No, because everyone else, including CHS didn't have the financial clout to defend themselves. CHS got very, very lucky and got a respected and experienced lawyer and suddenly GW looks on very shaky ground. I would be prepared to bet that all the other third party producers, Scibor etc are watching this case very carefully, if not already subscribed to the court dockets page to see the outcome. Personal profit? why do you think these people produce the parts, there is a market out there and they want part of it.

You say that these people have woken a sleeping lion, I see it as the kings new clothes and CHS is the little boy who said "Look, the Kings got no clothes on"

Cheers

Andrew