Chapterhouse Lawsuit - Settlement reached, Appeals withdrawn - Pg 234! Chapterhouse to re-open store

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**Howard A Treesong**

They seem to hang a lot on the 'confusion' aspect to the customer even when they use the fact that Chapterhouse have a disclaimer on their site as proof that they are using their names for things. Seems a bit of a confused point really, either Chapterhouse are trying to mislead customers or not.

And they cite people reselling stuff 2nd hand that cause people to be confused. But that's true of all figures, there are so many non-GW auctions have I seen on eBay with 'Warhammer' in the title.

**Mohoc**

From the deposition:

Games Workshop sells miniatures 28 millimeter little men. Some of them are called Space Marines and they have knee pads.

**warboss**

Mohoc wrote:From the deposition:

Games Workshop sells miniatures 28 millimeter little men. Some of them are called Space Marines and they have knee pads.

Liars! Some armor marks don't have knee pads!

**tastytaste**

So does anyone have an idea how long before we get a judgement at this point? I have no legal background so have no idea how long it would take the court to rule.

**rigeld2**

December is the trial date so... December at the earliest is most likely. I doubt the judge will rule before then.

**poda_t**

tastytaste wrote:So does anyone have an idea how long before we get a judgement at this point? I have no legal background so have no idea how long it would take the court to rule.

could be a week, could be new year. It all depends on the amount of stuff going through the court right now. If they went to trial it could be another year or two. I think the timeline is buried somewhere in this thread, but relatively speaking, if the request for judgement is granted, and the judge hands down his decision..... I'm just going to guess here, but I'd give it maybe 4 months. I do not work in the same legal system or in the same country, so my projection is a guess based on my experience with personal injury litigation.

**Sean_OBrien**

tastytaste wrote:So does anyone have an idea how long before we get a judgement at this point? I have no legal background so have no idea how long it would take the court to rule.

The summary judgements usually move fairly quickly. Other than what is offered as evidence - it is mostly just the judge reading through everything and deciding things on uncontested facts. His findings are usually released a fair amount of time ahead of the actual trial (which is scheduled to start early December) so that each side can go back and figure out their strategy for moving forward. Most likely in a week or so, we should get another posting where the judge determines when he will rule on the summary judgements.

**Kroothawk**

Another highlight from Chapterhouse's Summary judgment, filed before GW's and much more interesting and entertaining:
http://ia700405.us.archive.org/18/items/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.208.0.pdf

In this case, GW made a blanket allegation that every single one of CHS’s more than 100 products infringed GW’s undefined universe of copyrights, and that CHS’s reference to GW products to describe compatibility (and use of generic terms such as “assault” and “grenade launcher”) infringed GW’s trademarks. After dragging CHS through more than a year and a half of extensive discovery on these claims, 11 days ago GW abruptly dropped its copyright claims against 32 CHS products, and has also now abandoned a number of its trademark claims.

The undisputed evidence shows that GW’s remaining claims fail as well. Despite its size and sophistication, GW failed to come forward with basic documentation required to establish that it owns the rights it asserts. Despite repeated efforts by CHS and this Court to induce GW to provide discoverable documents related to such fundamental evidence as exemplars of the asserted works, ownership of the works, and use in the U.S. of its alleged trademarks, GW failed to supply such documents and the documents it has provided are too little, too late.

(...)

GW alleges infringement of many miniature toy soldiers, model vehicles, and assorted toy accessories. (SUF 40.) But UK copyright does not extend protection to such “mass produced . . . toys.”
Bently Report, ¶¶ 22-29, 38
(“a toy miniature of a fictional character is unlikely to be protected by [UK] copyright as a sculpture.”);
Lucasfilm Ltd. v. Ainsworth, [2010] F.S.R. 10, ¶ 82 (Ct. Appeal 2010); aff’d, Lucasfilm Limited and Others v. Ainsworth and another, [2011] UKSC 39 (UK Supreme Ct. 2011).
Where there is no copyright to own, GW cannot satisfy its burden with respect to its prima facie case of infringement.
As set forth in the Section above, copyright ownership is determined by the laws of the work’s country of origin.

(...)

CONCLUSION
Given the undisputed facts, GW’s claims fail. Inspiration is not infringement; nor is fair competition and comparative. CHS is entitled to summary judgment.

This motion forced GW to answer.
And until the end, GW couldn't be bothered to file a formally correct case and continues its "lackey, make them stop, they annoy us" attitude.

**timd**

Kroothawk wrote:Another highlight from Chapterhouse's Summary judgment, filed before GW's and much more interesting and entertaining:

Link?

I'd put money on a couple of the the abandoned copyright claims being boneswords and lashwhips and probably the Tervigon kit.

Tim

**Kroothawk**

Provided on previous page, but I added it to my post.
Another hilarious document, CHapterhouse lawyer Mr Oh asking GW's Andrew Meredith Jones about GW's trademark claims:
http://ia700405.us.archive.org/18/items/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.208.32.pdf

Q I am just trying to understand then the reason "Halberd" appears in this list with that date?
A You know what, I don't know. It is such a long list. I imagine it is on here because your client made some products that we are alleging infringe our rights, and they are something to do with Halberds, I would imagine, but "Halberd" as a trademark, I cannot honestly remember a specific product where we have called out "Halberd" and claimed it as our own word.
Q So is Games Workshop not contending there is a trademark on the word "Halberd"?
A I don't know, without asking my legal department. I would have to question -- you know, as I say, my opinio~ is that "Halberd" we cannot claim as an exclusive trademark.
(...)
Q Is Games Workshop claiming that it owns a trademark with respect to the general concept of Roman numerals combined with arrows?
A Roman numerals combined with arrows, it will be -- I still don't really understand what you are asking. We are not claiming we own Roman numerals and we are not claiming we own arrows, but if there is a unique combination or a way of depicting Roman numerals and/or arrows or other symbols that we use in commerce as marks of trade, rather like, I don't know rather like what, but as a unique combination, and if there is products that your client has made that have those same combinations, then that is where they are infringing that trademark.
(...)
Q So for all the different iterations of the wolves skull icons, have Games Workshop used each iteration as a trademark on product packages for products sold in the US?
A I couldn't swear to that. Actually, we might have done pictures, our artists might have drawn versions of the wolf skull icons that we have used, I was going to say on a novel but I guess that would still be establishing it as a mark of trade. There is the possibility that we have drawn wolf skulls and not used them on the front of actually on a box, if that is what you are asking.
(...)
Q Can you identify instances where -- let's start on page four with lions, where "lions" was used as a stand-alone trademark?
A I cannot actually -- you know, with "lions" I can't. I am struggling to remember or think of a product there that has got pictures of lions on. I am not saying there is not but I would be struggling to identify that. Likewise, "Griffin", "Triptych", on page 4, I believe that is a specific Dark Angel Triptych that we are referring to.
(...)
Q On page 5 now, on Exhibit 114 at the top, again same set of questions trying to identify use of commerce in the US, related to icons related to these entries, and we are going to start from the top with skulls with horns?
A As trademarks, specifically, I mean, we use skulls with horns all the time, but specifically in terms of describing them as a particular use on a particular product in the States as a trademark, I couldn't point at a specific thing, certainly not going back to 1989.

**Sean_OBrien**

@timd

That looks to be in Chapterhouses opening address - should be the first or second of the 208 series of document.

**H.B.M.C.**

Charax wrote:Brother Argos shopped Chapterhouse? that's...disappointing

White Knights be crazy yo!

**timd**

Thanks Kroot and Sean!

Sean_OBrien wrote:@timd

That looks to be in Chapterhouses opening address - should be the first or second of the 208 series of document.

I see the index (http://ia700405.us.archive.org/18/items/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.208.2.pdf ), but how does one find the items in the index? I'm not at all familiar with searching for legal documents..

PS. Sean, are you a WWII reenactor?

Tim

**Pacific**

Charax wrote:Brother Argos shopped Chapterhouse? that's...disappointing

I guess if your major hobby and investment of serious effort and time was with Games Workshop, and that forum no-doubt represents a massive slice of effort, then it is possible that you would go to major lengths to try and protect Games Workshop?

Actually.. I'm completely fishing here, I've got no idea why someone would do something like that! Especially as Marines (the focus of the forum) have been the biggest benefactors of 3rd-party bits. And the Chapterhouse Storm Raven kit surely stands as their crowing glory, for making the standard GW kit look approximately 247% better. Far more likely that Mr. Chapterhouse used his usual 'diplomatic' ability and p'ed off Brother Argos during some forum tete'a'tete perhaps?

**timd**

After reading The CH MSJ and the depositions, it seems that GW was badly served by their lawyers. There should have been extensive legal briefing meetings with the GW employees on the kinds of questions they would likely be facing before they were deposed.

CH's lawyers just rolled them hard with what appeared to be totally unexpected questions that the deposees should have been prepared for. Admittedly I have not seen all of the transcripts, but I think the deposed GW employees effectively became unintentional hostile witnesses for GW and definitely hurt their case badly.

Tim

**Kroothawk**

timd wrote:CH's lawyers just rolled them hard with what appeared to be totally unexpected questions that the deposees should have been prepared for.

Totally unexpected? Riiight!

Chapterhouse lawyer: So you claim trademark and copyright for these 100+ items.
GW: Yes.
CHS: Can you prove your first claim?
GW: Erm, you got me on that one.
CHS: Second?
GW: Same.
CHS: Third?
GW: Same.
CHS: Fourth?
GW: Same.
CHS: Can you prove any of your claims?
GW: You got me on that one. Can you stop them anyway?

**timd**

Kroothawk wrote:
timd wrote:CH's lawyers just rolled them hard with what appeared to be totally unexpected questions that the deposees should have been prepared for.

Totally unexpected? Riiight!

My point is that they should not and would not have been unexpected, if GW's lawyers briefed them properly. The GW lawyers (being highly regarded IP lawyers) must have know what was coming and probably use the same list of authorities when defending other IP cases. The GW employees being deposed had no idea of what was happening to them...

Tim

**Sean_OBrien**

Case in point is the deposition of the head of GW Retail North America. During the deposition, the CHS lawyers ask her if she was prepared for the interview, did she look over any documents for the interview, was she briefed by anyone, did she bother to track anything down on her own.

The sum total of her prep entailed a 30 minute conference call with the various GW lawyers and looking over the subpoena. Now, I know that if I am going to have a several hour deposition with the oppositions legal counsel and my job is to prove the validity of the claims made by my company through presentation of things like "First Use in Commerce" claims - I might want to just maybe do a little home work.

The entire thing is a bit of a clown show on their side of things. I imagine they are still waiting for CHS to fold like everyone before them.

**Kroothawk**

Highly regarded IP lawyers should know the necessary requirements for filing an IP case. GW lawyers didn't provide them for 1.5 years.
I take the liberty to not hold them in high regard.

BTW Andrew Meredith Jones above also admitted that he didn't prepare for more than 30 minutes, obviously having no idea of the topic.

**Mohoc**

Love this one in the motion for summary judgement (by CHS)

In addition, GW fails to alleged that any GW work is infringed by 4 of the 20 newlyidentified
CHS products in its Second Rev. Copyright Claim Chart (nos. 118, 119, 129, and
143), and CHS product no. 110 has not yet been cast, and has never been sold or offered for sale.
(SUF 50-51.) A work that does not yet exist cannot be substantially similar to anything.

**kirsanth**

In case it has not been said enough, thank you to everyone that is keeping us up to date.
I find this fascinating and would be sitting in the dark wondering why GW could have gotten away with this farce for years had it not been for most of the informed posts here.

The results I really hope, again, are in favor of the obvious and blatant - CHS.

Though I would not spend money on their stock without GW, I think this whole issue and GW's absurd, illogical, basically ignorant, and thoroughly . . .grandiose claims are being brought to heel is sorely needed so the hobby (that GW claims to support) can flourish.

Thanks again guys for keeping us up to date.

**Aerethan**

tree667 wrote:http://ia700405.us.archive.org/18/items/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.213.1.pdf

got this from Bols

Chapterhouse has in every instance
copied unique combinations of colors, symbols, the unique shape of the pad itself (including the
little aesthetic indents on the back of the rim), together with the specific name given to the
underlying character by Games Workshop. (Undisputed Facts #57-68).

This is GW stance in there arguement. It has merit in my opinion.

I'm just saying GW is within it right to try and defend its IP. Chapterhouse seems to have gone out of it way to "borrow" heavily from GW. Some of there own artists were told to make it look like this or that. I'm of the side that says chapterhouse poked the beast a bit too much and went too far. I honestly like some of there stuff and have ordered from them. I just think there going to lose this round.

Unique combinations of colors? Unique symbols? Unique shape?

Utilitarian shapes can't be copyrighted. You can't copyright a 1' cube of plastic. A shoulder pad is a shoulder pad, and GW sure as hell didn't invent them.

Unique combinations of colors? So now people can copyright color schemes? That itself is absurd.

Unique Symbols? An arrow is NOT unique, nor is it specific enough to be copyrighted. GW didn't create arrows, Omega symbols, or Roman Numerals. All of those symbols predate GW and the idea of copyrighting itself.

The ONLY legal leg GW had to begin with, was trademark infringement in the labeling of products or the advertising of them.

GW shot themselves in the foot here. I'm at the point where I wish CHS hadn't gotten this pro bono so that they could counter sue for legal fees(can their lawyers still do this?).

**Sean_OBrien**

Aerethan wrote:The ONLY legal leg GW had to begin with, was trademark infringement in the labeling of products or the advertising of them.

There trademark leg was weak and anemic.

Company A can use Company B's trademarks in a lot of different ways. They can use them comparatively (Coke vs Pepsi commercials). The can use them to illustrate compatibility (iFrogz, iSkins are designed to protect and work with iPads, iPods and other stuff). You can use them to clarify service (Windows PC technicians, Oracle Database administrators).

That is why GW has gone out of their way to try and say the emails they got were from "confused" individuals. The confusion is necessary to challenge legal use of the various trademarks.

Without anyone getting bent out of shape - assume for a second that GW looses their copyright claims because the court determines them to be derivative, generic and unoriginal. At that point, pretty much anyone and their brother could start cranking out the bits and use a phrase like "Compare this to Games Workshop's Lascannons". That is a perfectly acceptable method of using a mark, even a mark which you are competing directly against (that method is used on various generic items in stores across the US).

So, in the case of the Trademarks - they have to demonstrate that CHS was actually attempting to confuse/mislead their customers (which the archived images show proper attribution in the page footers). Or that they damaged the brand in some way (which the deposition of various GW employees failed to show). It isn't like CHS was trying to sell knock-off Prada items in China town. People who managed to find them knew who/what they were.

**warboss**

Sean_OBrien wrote: It isn't like CHS was trying to sell knock-off Prada items in China town. People who managed to find them knew who/what they were.

Except apparently not just a user but a mod at a hardcore 40k specific marine forum...

I'm not buying the confusion on this either. People may not agree that CHS has the right to design what they have but I haven't seen anyone ever claim that they actually thought they were buying a GW product from a completely separately branded and independent bits site where GW's name and logo are only mentioned specifically to say that they're NOT them.

**Mohoc**

GW shot themselves in the foot here. I'm at the point where I wish CHS hadn't gotten this pro bono so that they could counter sue for legal fees(can their lawyers still do this?).

I think they can still counter sue for reasonable attorney fees. However (based on my non-lawyer understanding), in order for that lawsuit to have any chance, they would have to defeat every single charge GW brought against them and prove that the case was malicious. In general, in US civil cases, both parties have to pay all their own legal fees; it is why you see these troll lawsuits all the time, but usually for patents.

**spaceelf**

timd wrote:
CH's lawyers just rolled them hard with what appeared to be totally unexpected questions that the deposees should have been prepared for.
Tim

You assume that they were not prepared. Maybe they are just incompetent. You have read GWs rules before, right.

**timd**

spaceelf wrote:
timd wrote:
CH's lawyers just rolled them hard with what appeared to be totally unexpected questions that the deposees should have been prepared for.
Tim

You assume that they were not prepared. Maybe they are just incompetent. You have read GWs rules before, right.

LOL! Yeah I'm familiar with GW rules writing, ever since Rogue Trader. Even started a little magazine called Inquisitor specifically to deal with rules problems.

What I read in the depositions made it appear that they had no clue that these questions were coming and that they had no clue as to why the opposition legal counsel was even asking those specific questions.

Would like to read the full Merrett and Jones depositions, but don't know how to access them...

Tim

**Warboss Gubbinz**

I'm looking thru PACER but i am not seeing the Deposition with that interview. I am working from 208 and up.

**Sean_OBrien**

timd wrote:Would like to read the full Merrett and Jones depositions, but don't know how to access them...

Tim

The depositions are not automatically part of the evidence, depending on what each side decides is useful to their purposes - some, all or none may be entered into evidence. We may end up seeing more as time goes on, that might be it though.

Automatically Appended Next Post:

Warboss Gubbinz wrote:I'm looking thru PACER but i am not seeing the Deposition with that interview. I am working from 208 and up.

Look at 208.2 It has the index of the evidence entered. Find the Exhibit number for the stuff you want to look at. Find the Exhibit number in the title. Read the file. Not sure which interview you are talking about - otherwise I might be able to point you to a specific file...but there are a lot of them there. Took me a few hours to read through everything last night, and it is a good "look behind the curtain" experience for those who are interested in the goings on inside GW.

**darkPrince010**

Not a lawyerly type, but I couldn't help but chortle at the "Compatible with 28mm wargames" bit; GW and 40K essentially comprise of the majority of the entire 28mm scifi wargame market and has painted themselves into a corner there; in order to be compatible with the "28mm wargame market" they have to be compatible with GW stuff, whether GW likes it or not.

Also, the repeated notings of GW failing to produce judge-mandated documents on time and suing CHS for marks they didn't even infringe on makes me wonder if the judge is just keeping from dismissing them and their case just to see how deep of a hole they'll dig for themselves.