Chapterhouse Lawsuit - Settlement reached, Appeals withdrawn - Pg 234!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

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**Kilkrazy**

I didn't know that two separate companies could share a trademark. It would seem to go against the core idea of trademarks.

That aside, trademarks are a pretty specific type of IP. When you apply for a trademark, you do it within an area of industry, and the trademark doesn't exist outside that area. (There are also geographical restrictions.)

For example, let's say I trademarked the term Mega Hero for games relating to fictional characters. That would not stop a mining tool company from calling itself Mega Hero Mining Tools.

I imagine that the legal firm checked if the term Super Hero(tm) had been trademarked in the arena of legal services, found it hadn't been, and decided to use it. If they didn't, and it is, then they will surely lose the case.

**Eldanar**

Although these threads tend to devolve into bombasity, there is no need to lock the thread yet. IIRC, the status conference is coming up on the 30th, and there might possibly be some orders or rulings issued by the judge following it.

**MagickalMemories**

@ Mods...
Rather than locking every thread that comes up regarding the "Bits Wars," wouldn't it be better instead to edit the thread and start throwing suspensions (eventually leading to bannings for the worst offenders) at the people disrupting it?

I mean, if it's THEIR intent to get the thread locked, they're succeeding. If they're just trying to disrupt the thread and argue, they're violating Dakka rules, anyway.

I know that it makes it more work for the Mod team, but that's why you guys get the glamorous offices and huge paychecks. Right?
And that's not even to mention the concubine secretaries.

Seriously, though, in the end it'll make for better threads as those same ones who do the disrupting every time start seeing themselves approaching the banishment precepice.

Eric

**Kroothawk**

I agree: People not interested in the topic should just stay off instead of posting off topic stuff or interrupt our discussion.

On topic, here another clarification on trademakr issues by weeble1000:

First, there's a whole world of IP beyond trademark infringement cases. I'd be willing to bet that there are far more patent infringement suits than there are trademark infringement suits, but I have nothing substantial on which to base that claim.

I've said this before, but you've raised the issue so here's my response:

Almost no trademark infringement suits go to court. This is because A) there's usually no money in them, and B) the remedy is very, very easy. To say it another way, it's hard to show monetary damages that mean anything, and the typical result is equitable relief anyway, i.e. you change the words. Trademarks are pretty cut and dry, at least compared to copyrights and patents.

The trademark infringement claims aren't an important part of the GW v CHS lawsuit. The facts are clear, and the only issue is moderation of trademark use. If the trademark infringement claims are really what Games Workshop cared about, all it would have had to do is either work it out with CHS out of court, or sue purely on that basis and get CHS to moderate its use of the marks. It would have been simple, cheap, and relatively quick. And I guarantee Winston and Strawn wouldn't be involved.

In fact, as Scammel has pointed out, Chapterhouse has already moderated its use of Games Workshop's marks, in effect rendering the trademark infringement claims moot.

Here's a pretend dialog:

GW: "Judge, stop them from using those words, please."

Judge: "They already stopped, why are you still asking me?"

GW: "But they caused irreparable harm!"

Judge: "Really? That little company? Stop wasting my time."

Fugazi, the possibility of confusion doesn't get you anywhere. The plaintiff has to show that confusion has already occurred, usually with expensive market research. This is civil court, not criminal court. Civil court is only about money. Without harm, there's no damages, without damages, there's no case.

But where's the confusion in the case of Chapterhouse Studios? What harm has it caused? Games Workshop has made plenty of allegations, but most of those allegations rely on confusion in the marketplace; actual, demonstrable, damage-causing confusion within the market for the products. The law says that you can't confuse people as to the source of your products by making true statements about them. "This kit is compatible with the Games Workshop Rhino tank." If that's true, there's no problem. You haven't misrepresented the product. You haven't attempted to confuse the customer. You haven't capitalized on the goodwill of the other company. You are selling a product that is designed to be compatible with another company's product and marketing it as such to the consumer. If it is illegal to market a product as it is designed and intended to be used, then it is illegal to make and sell that product, and we know that it is not so in the case of an aftermarket accessory. It doesn't matter if it is a car, a coffee maker, a sex toy, or a sculpture of a super soldier. They are all commercial products that fall under the same laws regarding fair business practices. If you argue that it is illegal to market a Rhino accessory kit as a Rhino accessory kit, you are arguing that it is illegal to market a replacement grille for a Dodge Charger as a replacement grill for a Dodge Charger, and we know that's not the case.

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**Kroothawk**

Chapterhouse has renewed their motion to dismiss this case, BTW yesterday was the last possible day to do this:

weeble1000 wrote:The motion to dismiss was renewed. I'll read it tomorrow. It's bed time here in the states.

I read it anyway...I just can't help myself. Here's an interesting excerpt (FAC is First Amened Complaint):

2. Plaintiff Concedes It Cannot Meet Its Burden of Identifying the Works Allegedly Infringed.
Astonishingly, Games Workshop concedes that it cannot identify its own works that have supposedly been infringed by Chapterhouse Studios’s products. FAC ¶ 30 (“only defendants know for certain which . . . books and other publications they accessed and relied upon in creating [their] works”) (emphasis added). But if Games Workshop cannot identify any works it believes have been infringed, it cannot possibly show substantial similarity, the sine qua non of infringement.7

(footnote 7: At a minimum, Games Workshop is attempting impermissibly to shift the burden of identifying its own works to defendants.)

Tellingly, although the FAC now purports to “exemplify some of the ways in which Chapterhouse infringes Games Workshop’s copyrighted works,” it still fails to specifically identify which works are supposedly infringed. Instead, the handful of new allegations in the FAC repeat the flaws for which the Court faulted the original Complaint, by alluding vaguely to “other . . . publications” (FAC ¶ 30.a), “many . . . background works” (FAC ¶ 30.b), “a number of . . . Space Marine unit types” (FAC ¶ 30.c), and “vehicles and miniatures” (FAC ¶ 30.d). For example, Plaintiff now alleges that one of Chapterhouse Studios’s products (a conversion kit) infringes an unidentified description and “representation” of a “Tervigon” in one of Games Workshop’s publications—but also insists that “Chapterhouse may also have referred to and relied upon other Games Workshop publications. . . .” FAC ¶ 30.a. Even if alluding vaguely to a “representation” in a multi-page volume as the supposedly infringed source of a single Chapterhouse Studios product did give adequate notice as to that product—and it does not— Plaintiff’s resolute refusal to limit the works it claims have been infringed by that product means that Chapterhouse Studios does not have adequate notice of Plaintiff’s actual or potential claims.8

(footnote 8: If the Court disagrees and finds that paragraph 30.a of the FAC does give Chapterhouse Studios adequate notice of the basis for that particular alleged infringement, despite the vague and unspecified manner in which it is pleaded, it should either dismiss that claim as non-actionable on its face or Plaintiff’s copyright claim should be limited to that alleged infringement.) - In other words, "We'd be happy to answer those claims in 30(a)(b)(c)(d) if that's all you want to specify."

Chapterhouse also added a citation of the recent court ruling in Peters v West:

Similarly, the court in Peters v. West, No. 10-CV-3951, Slip Copy, 2011 WL 831137 (N.D. Ill. Mar. 3, 2011) (Kendall, J.) recently dismissed a copyright claim under Rule 12(b)(6) because the similarities alleged were based on common and public-domain elements unprotected by copyright law. In that case, a rapper brought a copyright claim against a rival; in ruling on whether plaintiff had shown substantial similarity of the works sufficient to make out a prima facie case of infringement, the court first filtered out the elements of plaintiff’s work “lack[ing] the requisite originality to warrant protection,” such as elements that “enjoy[ed] a robust existence in the public domain long before being employed” by plaintiff. Id. at *4. Because the only elements plaintiff could point to as evidence of infringement were unprotectable, the court dismissed the complaint. Id. at *6.

Here's another interesting bit:

The FAC also now claims copyright protection for unspecified and commonplace elements such “an arrow,” “Roman Numerals,” and various unspecified “studs, arrow and cross arrow designs, inverted ‘V’ and Roman numeral icons.” FAC ¶30.b, c. But all of those elements “enjoyed a robust existence in the public domain long before being employed” by Games Workshop, and as such are not protected by copyright. Peters, 2011 WL 831137 at *4. To the extent that Plaintiff’s claims are based on such general, unprotectable themes and public-domain elements, they should be dismissed.

A nice summary by iamfanboy:

For the tl;dr types, what that boils down to is CHS and their lawyers saying, "If they can't tell us what we're infringing of theirs, how can we change it? By the way judge, we're perfectly willing to compromise here; they're the ones who decided to go straight to court and waste everyone's time and money. Oh, and these other lawyers already hashed out some of the precedent here, saying you can't copyright common images like arrows or serpents and that sort of thing..."

Some earlier comment on GW's dilemma:

weeble1000 wrote:The way I see it rodmillard is that Games Workshop has placed itself in a sticky position.

It can't drop the case because it would look bad, potentially make it harder to enforce similar copyright claims, and expose the company to a malicious litigation suit. I'm not convinced such a suit would get very far, but I think it's fair to say that Games Workshop isn't considering dropping the suit to be a viable option at this point.

On the other hand, to continue with the litigation Games Workshop is facing a well-argued motion to dismiss that raises legitimate concerns. Games Workshop therefore has to define its claims, but this is problematic because the company doesn't want to expose any claimed copyrights to summary judgement or voluntarily limit them. I expect that it also doesn't want to undermine its derivative works theory. Without this derivative works theory, the fortress wall doesn't keep competitors out of Warhammer and Warhammer 40,000 and therefore isn't much of a barrier at all.

Given this, it doesn't surprise me that the company's response was to give a cursory nod to claim definition and try to deflect the motion. But what we'll likely see in the next few days is a renewed motion to dismiss from the Defendant. This puts Games Workshop right back in the same position. Mr. Moskin has a tough job in that he has to walk a fine line between making a complaint that will satisfy the Court and/or the Defendant and protecting his client's interests.

Chapterhouse could, and maybe will, argue to the court that it would be happy to defend the specific allegations in 30(a)(b)(c)(d) of the amended complaint. This isn't something Games Workshop would agree to, but I think we, and Judge Kennelly for that matter, can see where this is going. To continue the wargaming analogy, Chapterhouse is so far forcing Games Workshop to react and play Chapterhouse's game. Can Games Workshop take over the initiative? Maybe, but I don't know how Moskin plans to do that. We'll have to wait and see.

**Kilkrazy**

To my mind, GW's overall position seems to be this.

They have assembled a game background which contains public domain elements such as oblate hemi-ogives, arrows, Termagant, and Roman numerals. It also contains their own original inventions such as meltagun and Tervigon.

Because the assembled "fluff" as a whole is copyright of GW, they think that this grants them a copyright to all the individual elements within it, regardless of whether they are invented or taken from the public domain.

Automatically Appended Next Post:

MagickalMemories wrote:@ Mods...
Rather than locking every thread that comes up regarding the "Bits Wars," wouldn't it be better instead to edit the thread and start throwing suspensions (eventually leading to bannings for the worst offenders) at the people disrupting it?

I mean, if it's THEIR intent to get the thread locked, they're succeeding. If they're just trying to disrupt the thread and argue, they're violating Dakka rules, anyway.

I know that it makes it more work for the Mod team, but that's why you guys get the glamorous offices and huge paychecks. Right?
And that's not even to mention the concubine secretaries.

Seriously, though, in the end it'll make for better threads as those same ones who do the disrupting every time start seeing themselves approaching the banishment precepice.

Eric

This thread is on to the tenth page and hasn't been locked.

People should report posts they think are infringing the rules. (One of which is to stay on topic.)

**aka_mythos**

I've been saying it for some time... noting it two threads ago... GW is too broad in its claim. Its trying to use the reach of a broad assertion of ownership of "their" distinct aesthetic to claim individual components made by CH violate its design, despite those components at best being small elements relative to the greater design. It would be as absurd as if Disney insisted any three circles oriented similarly to Mickey Mouse just because three circles are used to draw the character. With TM claims, product confusion has to take the form of something thats a specific copy or something that is broadly similar. Conversion parts are too small a subcomponent relative to GW's design to be broadly similar and so GW's being forced to claim a more specific part to part confusion.

**Howard A Treesong**

Kilkrazy wrote:To my mind, GW's overall position seems to be this.

They have assembled a game background which contains public domain elements such as oblate hemi-ogives, arrows, Termagant, and Roman numerals. It also contains their own original inventions such as meltagun and Tervigon.

Because the assembled "fluff" as a whole is copyright of GW, they think that this grants them a copyright to all the individual elements within it, regardless of whether they are invented or taken from the public domain.

That would appear to be it, they seem to think they can reach much further than that actually can.

I didn't know that two separate companies could share a trademark. It would seem to go against the core idea of trademarks.

There's a bizarre situation with Forbidden Planet as the company split and both halves use the name on their store, though more precisely one is 'Forbidden Planet' and the other 'Forbidden Planet International'

**Ouze**

Kilkrazy wrote:

Automatically Appended Next Post:

MagickalMemories wrote:@ Mods...
Rather than locking every thread that comes up regarding the "Bits Wars," wouldn't it be better instead to edit the thread and start throwing suspensions (eventually leading to bannings for the worst offenders) at the people disrupting it?

I mean, if it's THEIR intent to get the thread locked, they're succeeding. If they're just trying to disrupt the thread and argue, they're violating Dakka rules, anyway.

I know that it makes it more work for the Mod team, but that's why you guys get the glamorous offices and huge paychecks. Right?
And that's not even to mention the concubine secretaries.

Seriously, though, in the end it'll make for better threads as those same ones who do the disrupting every time start seeing themselves approaching the banishment precepice.

Eric

This thread is on to the tenth page and hasn't been locked.

People should report posts they think are infringing the rules. (One of which is to stay on topic.)

You say that as if MM's post came out of the blue with no basis in events. On the previous page, a fellow mod suggesting locking the thread for No Discernible Reason©. I agree with MM - I've seen several threads, maybe most threads regarding IP issues, consistently get threadjacked by nee'r-do-wells who essentially have made adult discussions on any IP related topic impossible on this forum. Every time the mods lock the thread rather then slam the banhammer, it rewards and emboldens them. The irony, of course, is that all my comments in this post are only marginally on-topic, thus making me part of the problem

**notprop**

@KK - presaumably GW is not claiming copyright to the individual elements, arrow, roman numeral etc; but is instead addressing the specific use of these items with its wholey created Universe.

So the various SM squad markings (generic symbols) upon a SM shoulder pad (surely a recognisable GW specific item) and sold as "Space Marine Squad Shoulder pads", something that GW already sells should be grounds enough for action? (or at least a valid test of the proposition).

Re the chapter pads, GW also make these, with a few exceptions of those sold by CH.

Another point that I can't quite get my head around is the "GW don't make it therefore ANother can". I would have thought that this stand point could not be reliably used in court for CH's defence. Designing avenues for further expansion would presumably be weighted in the designers favour to exploit. Not making one is not tacit approval for others to do so, or at least I would assume.

Just a few points to discuss.

I recant my previous page 5 statement, this thread is not a drawn out bore. Only drawn out.

**biccat**

Kroothawk wrote:A nice summary by iamfanboy:

For the tl;dr types, what that boils down to is CHS and their lawyers saying, "If they can't tell us what we're infringing of theirs, how can we change it? By the way judge, we're perfectly willing to compromise here; they're the ones who decided to go straight to court and waste everyone's time and money. Oh, and these other lawyers already hashed out some of the precedent here, saying you can't copyright common images like arrows or serpents and that sort of thing..."

This whole thing looks to be a great example of terrible pleading. GW must not have an experienced IP litigator reviewing these pleadings before submission.

Pleading a copyright case is fairly straightforward:

This is our copyright (X). We own it and registered it (Y). Defendant infringed it by making and selling Z.

**Chibi Bodge-Battle**

Not sure I follow Notprop.

How do GW claim such specific usage of symbols, when military organisations have been doing so for for yonks.
cf my earlier post for illustrations.

To say that it is context specific to marine chapters is saying that a fictional future army uses the same symbols that have historically been serving the same function, and nobody other than GW could possibly think that would happen.

I don't see how you can claim IP in this instance.

**Requia**

biccat wrote:
Kroothawk wrote:A nice summary by iamfanboy:

For the tl;dr types, what that boils down to is CHS and their lawyers saying, "If they can't tell us what we're infringing of theirs, how can we change it? By the way judge, we're perfectly willing to compromise here; they're the ones who decided to go straight to court and waste everyone's time and money. Oh, and these other lawyers already hashed out some of the precedent here, saying you can't copyright common images like arrows or serpents and that sort of thing..."

This whole thing looks to be a great example of terrible pleading. GW must not have an experienced IP litigator reviewing these pleadings before submission.

Pleading a copyright case is fairly straightforward:

This is our copyright (X). We own it and registered it (Y). Defendant infringed it by making and selling Z.

Not nearly so simple, (nor is registered relevant, except to prove dates and when you talk about how much money the other guy owes you) but GW is probably basing the claim on trademark instead of or in addition too copyright, which makes it more complicated regardless. IE, you get to ask happy funtime questions like 'does this count as trade dress' (unlike copyright, you don't get trademark simply for being the first to do it) and 'would a customer mistake this for a GW product'. Or best of all, the bizarre claims around the watering down of trademarks. IE, it can be found that CHs actions in no way harm GW directly, but that they'd create a situation where future companies would think its ok to do things that do harm GW.

I'll also give out a defense here in favor of GW. Even if Chapterhouse is 169% in the right here, you can lose a trademark for failing to sue people who are sortof infringing on it (IE, a third party could in the future claim GW has no trademark and produce things that really do screw up GW, using longstanding precedent that CH produces similar things to defend themselves in court).

**Kilkrazy**

The basis of GW's action is that consumers do not understand that the Chapter House products are not GW products, so that when people buy the Chapter House products, these sales replace sales of official products that GW rightfully expected to gain.

notprop wrote:So the various SM squad markings (generic symbols) upon a SM shoulder pad (surely a recognisable GW specific item) and sold as "Space Marine Squad Shoulder pads", something that GW already sells should be grounds enough for action? (or at least a valid test of the proposition).

This depends on two issues.

1. Do GW hold copyright in an oblate hemi-ogive decorated on the convex face with a Roman numeral (etc.)?
2. Can Chapter House make such an item and describe it as “Shoulder Pad for Space Marine".

To address point 2 first, Chapter House have stopped calling their stuff “Shoulder Pad for Space Marine”.

Point 1 is up for grabs, because arguably the solid form plus public domain deco is completely generic.

GW’s claim seems to be that all these things like shoulder pads are part of the game background they invented, and therefore, because they have copyright in the background as a whole, they also have copyright in the individual parts.

That is disputable.

If GW do not hold a copyright, then anyone can make similar parts and, if it dents GW's sales, that is just hard cheese.

notprop wrote:Re the chapter pads, GW also make these, with a few exceptions of those sold by CH.

Another point that I can't quite get my head around is the "GW don't make it therefore ANother can". I would have thought that this stand point could not be reliably used in court for CH's defence. Designing avenues for further expansion would presumably be weighted in the designers favour to exploit. Not making one is not tacit approval for others to do so, or at least I would assume.

Company A can make something and the only thing that would stop Company B from making something similar is the issue of copyright as mentioned in my answer above.

The point about Chapter House making stuff that GW don't make, is that part of this case is about business damages. In other words, kits that GW have failed to sell because Chapter House are selling one.

There are two sides to this.

1. GW don’t sell a Tervigon, so they can’t be possibly be losing sales from someone else selling a kit to convert a Tervigon. So, no business damages, no claim.
2. If GW don’t hold copyright in the Tervigon design, they can’t stop someone else from selling a similar kit, except by claiming passing off (in other words, the other company is presenting itself as GW and its products as GW products.) All they can do is to stop someone selling it as a Tervigon, because that is a GW trademark.

Personally I think GW have a good claim to copyright in the Tervigon design, so they may be on good grounds to complain about that specific item, however ultimately the court will decide on that specific issue, and it cannot be conflated with the issue of shoulder pads or octagonal panels decorated with a lizard’s head. (Rhino door.)

**aka_mythos**

Based on the court document summary, posted previously GW's trying to claim specific usage within the context of their setting.... but that these symbols are independently not protected because they're public domain.

GW wants to say:
(unprotected design)+( a small part of a larger design)= Trade Marked IP.

That tends not to work, especially given the volume of common symbols that would suddenly belong to GW. Components of larger designs are rarely covered as well; they have to be indepedently identifiable in the absence of the rest. A skull or a roman numeral on a shoulder pad is too generic. This is one of many reasons CH's lawyers are demanding greater specificity from GW.

I think CH's lawyer is correct in saying " at a minimum, Games Workshop is attempting impermissibly to shift the burden of identifying its own works to defendants." That because GW took the broad based approach... as to say a shoulder pads a shoulder pad, and thus ours... they can not currently point to specific instances where their TM is being irreparably used.

**biccat**

Requia wrote:
biccat wrote:This whole thing looks to be a great example of terrible pleading. GW must not have an experienced IP litigator reviewing these pleadings before submission.

Pleading a copyright case is fairly straightforward:

This is our copyright (X). We own it and registered it (Y). Defendant infringed it by making and selling Z.

Not nearly so simple, (nor is registered relevant, except to prove dates and when you talk about how much money the other guy owes you) but GW is probably basing the claim on trademark instead of or in addition too copyright, which makes it more complicated regardless.

I'm not sure where you're getting your information. Registration is not only relevant, it's a requirement for suit.

The current motion to dismiss addresses GW's copyright claim, not their trademark claim (even assuming they've made a trademark or trade dress claim). I haven't seen GW's complaint, but assuming they made TM claims, they haven't been addressed by the user posting the information. Further, GW's copyright claims can be dismissed without prejudicing their trademark claims.

**Eldanar**

biccat wrote:
Kroothawk wrote:A nice summary by iamfanboy:

For the tl;dr types, what that boils down to is CHS and their lawyers saying, "If they can't tell us what we're infringing of theirs, how can we change it? By the way judge, we're perfectly willing to compromise here; they're the ones who decided to go straight to court and waste everyone's time and money. Oh, and these other lawyers already hashed out some of the precedent here, saying you can't copyright common images like arrows or serpents and that sort of thing..."

This whole thing looks to be a great example of terrible pleading. GW must not have an experienced IP litigator reviewing these pleadings before submission.

Pleading a copyright case is fairly straightforward:

This is our copyright (X). We own it and registered it (Y). Defendant infringed it by making and selling Z.

To be fair to GW's attorneys...I don't think they expected it to get this far. CHS getting a highly respected law firm to represent them is the equivalent of the proverbial arrow from the sun striking Achilles in the heel. Now they are merely scrambling trying to save face and put forward something. And too, they are probably circumscribed by some of the more expansive and somewhat irrational claims that GW has made concerning its IP over the years. Like many whores...er...attorneys, they appear willing to give the client what it wants as long as it is willing to pay.

And to most non-gamers, the distinctions on gaming products are probably so insignificant so as to be indistinguishable to the non-gamer. (And apparently to GW corporate types as well

).

I have a feeling that GW's attorneys are placing a large amount of the meat of their case in the various IL state business infringement claims, all while placating GW's desire to continue to assert its broader, "We own everything" types of claims. It would be nice to have an IL attorney comment. Ulitmately, if GW continues to pursue this, it might actually be successful in some of these lesser IL state claims, all while having its fortress wall of IP shattered. That is not a good result from GW's perspective either.

**Alpharius**

Eldanar wrote:

To be fair to GW's attorneys...I don't think they expected it to get this far. CHS getting a highly respected law firm to represent them is the equivalent of the proverbial arrow from the sun striking Achilles in the heel. Now they are merely scrambling trying to save face and put forward something. And too, they are probably circumscribed by some of the more expansive and somewhat irrational claims that GW has made concerning its IP over the years.

That sounds about right, actually!

**notprop**

Sorry Eldanar but where is there evidence of this?

In defence of lawyers I would suggest that they will advise thier client when it is best to seek an alternative settlement or to drop the case if necessary if it would be counter intuitive to carry on. I would suggest both professional ethics and whatever governs legal matters in the US would pretty much insure this. It is simply not good business to waste the time of a Client on something that they will ultimately recognise as futile. Assuming that the Client is not so wrapped up in things as to keep going for the jugular for personal reasons? GW is a PLC so I would suggest that there are enough checks and balances to prevent this.

Allot of posters are indicating money as GWs reason for this suit and I can't see it, since CH will not have it. This just seems to be GWs continued IP protection regime in action (on a larger stage though). If it was Mattel GW was suing then yes money would be a goal as well but here, I can't see it.

@ KK - I agree with you on the Tervigon issue and this is an example of the many small claims that this case is made up of. I think that there is sufficient grounds to at least here this case fully assuming no party backs down

Going back to oblate hemi-ogive decorated on the convex face with a Roman numeral (etc.) the fact that CH has altered its website in response to the case "can" be seen as acknowledgement of some over stepping of the mark.

Further its is not just the production of oblate hemi-ogive decorated on the convex face with a Roman numeral (etc.) it is the sale of oblate hemi-ogive decorated on the convex face with a Roman numeral (etc.) for the use of wargaming with grimdark space men. It is this later part that will define any case I would have thought and also what caught the attention of GW.

Finally to go back on previous topics again (sorry) but I thought that copyright was not necessarily required to be registered, but could be used if you can prove previous usage. I may not be remembering one of the Lawyer types previously quite correctly, but if this is the case then 20 odd years of SM would also give GW grounds for complaint.

**AndrewC**

Notprop, I fully agree with what you say, but I would quote an old saying to you;

He who pays the fiddler names the tune.

If GW wants to go ahead with this action, then no matter what the lawyers think, they will go ahead with it.

Previous usage is an iffy one. Even if you have used it, it doesn't automatically give you the right to own it. Afterall you may not have had the right to use it in the first place. To protect it I think they would have to prove they own it, which they may, but there are a few on here that have cast enough doubt on the issue that GW will have to prove the ownership in court.

On a lighter note, did GW take a Panic Test when CHS got a lawyer?

Cheers

Andrew

**notprop**

Hmm LD7 unless comissar Kirby was nearby to shoot anyone floundering?

**biccat**

notprop wrote:Finally to go back on previous topics again (sorry) but I thought that copyright was not necessarily required to be registered, but could be used if you can prove previous usage. I may not be remembering one of the Lawyer types previously quite correctly, but if this is the case then 20 odd years of SM would also give GW grounds for complaint.

Sorry, I probably should have been more clear.

You don't need to register a copyright to have protections in the copyright. However, copyright registration is a prerequisite for filing suit.

You don't have to register before the infringement starts to have an actionable claim.
You do have to register (exceptions omitted) before you file your complaint/sue.

**Kilkrazy**

That is only for works of US origin. The GW works are of course of UK origin.

**MagickalMemories**

I'm glad to see CHS has been able to manage such a robust defense. It's obvious that their lawyers know what they're doing, and is "calling GW out" on all of the loopholes (and more!) that lawyers of the real and armchair varieties have been hashing out on their own in the various forums and threads.

Kilkrazy wrote:
MagickalMemories wrote:@ Mods...
Rather than locking every thread that comes up regarding the "Bits Wars," wouldn't it be better instead to edit the thread and start throwing suspensions (eventually leading to bannings for the worst offenders) at the people disrupting it?

I mean, if it's THEIR intent to get the thread locked, they're succeeding. If they're just trying to disrupt the thread and argue, they're violating Dakka rules, anyway.

I know that it makes it more work for the Mod team, but that's why you guys get the glamorous offices and huge paychecks. Right?
And that's not even to mention the concubine secretaries.

Seriously, though, in the end it'll make for better threads as those same ones who do the disrupting every time start seeing themselves approaching the banishment precepice.

Eric

This thread is on to the tenth page and hasn't been locked.

People should report posts they think are infringing the rules. (One of which is to stay on topic.)

Hope I wasn't misunderstood. My post was in response to the many people asking that this thread be locked. Since the arguers managed to get every other one locked, I was hoping we could avoid the same fate for this one.
Thanks.

Eric

**odinsgrandson**

Plaintiff Concedes It Cannot Meet Its Burden of Identifying the Works Allegedly Infringed.
Astonishingly, Games Workshop concedes that it cannot identify its own works that have supposedly been infringed by Chapterhouse Studios’s products. FAC ¶ 30 (“only defendants know for certain which . . . books and other publications they accessed and relied upon in creating [their] works”) (emphasis added). But if Games Workshop cannot identify any works it believes have been infringed, it cannot possibly show substantial similarity, the sine qua non of infringement.7

(footnote 7: At a minimum, Games Workshop is attempting impermissibly to shift the burden of identifying its own works to defendants.)

Wow. Just wow.

I don't see how GW could possibly have a case now. I mean, the burden of proof is ALWAYS on the plaintiff's head, and there's no way to actually win an infringement case if you aren't being specific.

Ok, so Chapterhouse renews the motion to dismiss on the last day that they are allowed to do so (which seems like the thing to do, really).

Can they possibly go to trial without identifying which specific items have infringed upon which specific copyrighted/trademarked properties?

I mean, at this point, I don't know what the GW lawyers are thinking.

Kilkrazy wrote:
This thread is on to the tenth page and hasn't been locked.

People should report posts they think are infringing the rules. (One of which is to stay on topic.)

Amen to that. I'm rather impressed with this thread's posters.

**biccat**

Kilkrazy wrote:That is only for works of US origin. The GW works are of course of UK origin.

I'll admit, I haven't read the Berne Convention that thoroughly. I assumed that since GW had not included a registration number (they do have US copyrights), they didn't need one for some reason.

However, my post was a slight tangent to respond to notprop's question about copyright registration, and not specifically about this case.

The point about pleading standard remains. GW should simply have laid out it's copyrighted material (e.g. title and publication date), then asserted ownership and infringement.

**Kilkrazy**

Yes, indeed.

I think the problem is that a lot of their material is of dubious provenance for copyright. For example, they didn't invent the name "termagant" though they did invent "Tervigon".

They could trademark termagant, which is not the same thing, of course.

**weeble1000**

This is from the US Copyright Office Website (www.copyright.gov)

Copyright in General

What is copyright?
Copyright is a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.

What does copyright protect?
Copyright, a form of intellectual property law, protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed. See Circular 1, Copyright Basics, section "What Works Are Protected."

How is a copyright different from a patent or a trademark?
Copyright protects original works of authorship, while a patent protects inventions or discoveries. Ideas and discoveries are not protected by the copyright law, although the way in which they are expressed may be. A trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others.

When is my work protected?
Your work is under copyright protection the moment it is created and fixed in a tangible form that it is perceptible either directly or with the aid of a machine or device.

Do I have to register with your office to be protected?
No. In general, registration is voluntary. Copyright exists from the moment the work is created. You will have to register, however, if you wish to bring a lawsuit for infringement of a U.S. work. See Circular 1, Copyright Basics, section “Copyright Registration.”

Why should I register my work if copyright protection is automatic?
Registration is recommended for a number of reasons. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney's fees in successful litigation. Finally, if registration occurs within 5 years of publication, it is considered prima facie evidence in a court of law. See Circular 1, Copyright Basics, section “Copyright Registration” and Circular 38b, Highlights of Copyright Amendments Contained in the Uruguay Round Agreements Act (URAA), on non-U.S. works.

I’ve heard about a “poor man’s copyright.” What is it?
The practice of sending a copy of your own work to yourself is sometimes called a “poor man’s copyright.” There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration.

Is my copyright good in other countries?
The United States has copyright relations with most countries throughout the world, and as a result of these agreements, we honor each other's citizens' copyrights. However, the United States does not have such copyright relationships with every country. For a listing of countries and the nature of their copyright relations with the United States, see Circular 38a, International Copyright Relations of the United States.

**Eldanar**

notprop wrote:Sorry Eldanar but where is there evidence of this?

In defence of lawyers I would suggest that they will advise thier client when it is best to seek an alternative settlement or to drop the case if necessary if it would be counter intuitive to carry on. I would suggest both professional ethics and whatever governs legal matters in the US would pretty much insure this. It is simply not good business to waste the time of a Client on something that they will ultimately recognise as futile. Assuming that the Client is not so wrapped up in things as to keep going for the jugular for personal reasons? GW is a PLC so I would suggest that there are enough checks and balances to prevent this.

If you will notice, I couched my language in terms of what I thought had/has occurred; not what had/has actually occurred.

I agree with you that there are ethical duties to advise a client on what is the best course of action. Having done so, and then the client decides to proceed against your counsel, do you then discharge the client? It is easy to do with no legal proceedings ongoing, but mid-trial its not likely going to happen. Also, this could potentially damage any standing relationship you have with the client, as well as potentially raise a bar complaint and/or malpractice claim. Ethical duties aside, the legal practice is still a business, and sometimes business decisions trump legal practicalities.

There are plenty of attorneys willing to advise a client, write a CYA letter knowing the client will not go along with the advice, and then proceed with the client's wishes.

Short of this, how then would you characterize the continued overly broad and non-specific arguments proposed by GW concerning the copyright claims? Hell, CHS's counsel even submitted a "redlined" document demonstrating that GW's first compaint and amended complaint were virtually the same document.

And too, I understand the concept that sometimes you just don't have a good argument and you just go with whatever you have...

**Kroothawk**

biccat wrote:Pleading a copyright case is fairly straightforward:
This is our copyright (X). We own it and registered it (Y). Defendant infringed it by making and selling Z.

I agree with Eldanar.
Pleading a copyright case would be fairly simple ... if the case is justified.
My impression is that
1.) GW has omnipotent and totally unrealistic views on copyright (as documented on their legal page on the GW store where they claim copyright for the Warhammer world and all races including dwarfs, Orcs, High/Wood/Dark Elves, the Chaos Star), they seem to think that they invented tabletop gaming and everyone else should stop selling in that market.
2.) Previously it was enough to threaten small companies with C&D letters to make them stop. No need to have legal competence for that.
3.) This time it didn't work and GW must prove their point. GW can't but is not aware of that. Their lawyers in USA are aware of that (and not at all familiar with toy soldiers obviously), so they can't proceed as usual but have to make a big smoke screen, hoping the CHS lawyers are incompetent and get irritated. Openly saying that GW doesn't have a justified claim is no option for GW's lawyers, making a standard claim that stands trial in court neither.

Chances for dismissal seem good. If the world doesn't adapt to GW's legal claims, maybe GW has to adapt to the world. Always tough when your dream castle breaks down. But happens when your company doesn't allow for internal criticism and feedback.

BTW here another comment by weeble1000:

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.

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.

For example, if your drawing depicted a "Tervigon" eating a Space Marine and mine depicted a "Tervigon" destroying a building, the subject matter of the works would be different, even if the concept of the "Tervigon" is the same. This is because the idea of the "Tervigon" is not protectable. Games Workshop can say that a "Tervigon" would destroy a building as much as eat a Space Marine, but if Games Workshop has not expressed the idea of a "Tervigon" destroying a building, there's little or no protection.

Now, with Chapterhouse's alleged "Tervigon" conversion kit, you have some additional factors to consider. First, even insofar as Games Workshop has expressed the idea of a "Tervigon" in words and pictures, it has not produced a sculpture of a "Tervigon." This necessarily requires Games Workshop to accuse a sculpture of copying a drawing or a description. Given that it would be difficult to prove copyright infringement even with a substantially similar drawing, accusing a sculpture is going far out on a limb. Additionally, the accused Chapterhouse product is a conversion kit, meaning that it is not a "whole" "Tervigon." This means that the work of art is of necessity extremely different from any expressions of a "Tervigon" because it isn't even the whole creature as conceptualized by Games Workshop. Bear in mind that the use to which the product is intended to be put has no bearing here. That is in the realm of fair business practices, not copyrights.

Games Workshop has attempted to circumvent this deficiency in its claims by arguing that the 106 Chapterhouse products are derivative works. Games Workshop is attempting to get around the more than "mere trivial" variation standard of originality by arguing that the works are "recast, adapted from, or transformed" versions of its underlying copyrights. However, as has been argued by the Defendant, this argument is itself deficient.

"But “[a] work is not derivative . . . simply because it is ‘based upon’ . . . preexisting works.” Warner Bros. Ent. Inc. v. RDR Books, 575 F. Supp. 2d 513, 538 (S.D.N.Y 2008). Indeed, “[a] work is not derivative unless it has been substantially copied from the prior copyrighted work.” Houlihan v. McCourt, No. 00 C 3390, 2002 WL 1769822, at *7 (N.D. Ill. July 29, 2002); Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517 (7th Cir. 1996)." (CHS Memorandum in Support of Motion to Dismiss 2(c) page 9)

And further (page 10): "Sculptural works are not among the examples of derivative works listed in the statute, and it not plausible that a sculptural work could recast, transform, or adapt a novel. Plaintiff fails to plead facts that would raise its claim to the level of plausibility, as required by Twombly. Twombly, 550 U.S. at 570."

This is why Games Workshop is making a derivative work argument; direct, side by side comparisons of the accused works with the Plaintiff's works would fail to demonstrate copyright infringement. Unfortunately for the Plaintiff, the derivative works theory is inherently flawed.

I also don't believe rules are protectable in almost any sense, and citing the rulebook as a technical manual that implicitly identifies an intention to produce products described therein is a trademark/trade dress issue, not a copyright issue.