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It is definitely possible that GW is overreaching, but trademark law is complicated to the point that a lawsuit could go either way.

 Tyran wrote:
It is definitely possible that GW is overreaching, but trademark law is complicated to the point that a lawsuit could go either way.

I guess the central question here is if GW is in the right to ask for reasonable precautions against customer confusion and brand dilution, or if they're making unreasonable demands on ebay. Imho, it is actually reasonable to demand that there'd be a way to distinguish 'original' miniatures and products from, for lack of a better term, 'accessories' and alternatives. While it is not realistic that ebay checks every listing actively, just having that categoriziation option and encouraging its correct use is a thing they could solve relatively easy and without a real cost to them. Other areas like aftermarket car parts or accessories for e.g. video game consoles etc. solved these problems a long long time ago, so it is certainly possible.

Tsagualsa wrote:

 Tyran wrote:
It is definitely possible that GW is overreaching, but trademark law is complicated to the point that a lawsuit could go either way.

I guess the central question here is if GW is in the right to ask for reasonable precautions against customer confusion and brand dilution, or if they're making unreasonable demands on ebay. Imho, it is actually reasonable to demand that there'd be a way to distinguish 'original' miniatures and products from, for lack of a better term, 'accessories' and alternatives. While it is not realistic that ebay checks every listing actively, just having that categoriziation option and encouraging its correct use is a thing they could solve relatively easy and without a real cost to them. Other areas like aftermarket car parts or accessories for e.g. video game consoles etc. solved these problems a long long time ago, so it is certainly possible.

...like the "Manufacturer" field that was already mentioned, perhaps?

 Dysartes wrote:

Tsagualsa wrote:

 Tyran wrote:
It is definitely possible that GW is overreaching, but trademark law is complicated to the point that a lawsuit could go either way.

I guess the central question here is if GW is in the right to ask for reasonable precautions against customer confusion and brand dilution, or if they're making unreasonable demands on ebay. Imho, it is actually reasonable to demand that there'd be a way to distinguish 'original' miniatures and products from, for lack of a better term, 'accessories' and alternatives. While it is not realistic that ebay checks every listing actively, just having that categoriziation option and encouraging its correct use is a thing they could solve relatively easy and without a real cost to them. Other areas like aftermarket car parts or accessories for e.g. video game consoles etc. solved these problems a long long time ago, so it is certainly possible.

...like the "Manufacturer" field that was already mentioned, perhaps?

Yeah, something like that would be one of the options. You could do more sophisticated things, like e.g. searchable listings/tags for whatever it could be compatible with, but the manufacturer field would be sufficient for the most central demand and easy to implement and use for both platform and users.

Tsagualsa wrote:

 Dysartes wrote:

Tsagualsa wrote:

 Tyran wrote:
It is definitely possible that GW is overreaching, but trademark law is complicated to the point that a lawsuit could go either way.

I guess the central question here is if GW is in the right to ask for reasonable precautions against customer confusion and brand dilution, or if they're making unreasonable demands on ebay. Imho, it is actually reasonable to demand that there'd be a way to distinguish 'original' miniatures and products from, for lack of a better term, 'accessories' and alternatives. While it is not realistic that ebay checks every listing actively, just having that categoriziation option and encouraging its correct use is a thing they could solve relatively easy and without a real cost to them. Other areas like aftermarket car parts or accessories for e.g. video game consoles etc. solved these problems a long long time ago, so it is certainly possible.

...like the "Manufacturer" field that was already mentioned, perhaps?

Yeah, something like that would be one of the options. You could do more sophisticated things, like e.g. searchable listings/tags for whatever it could be compatible with, but the manufacturer field would be sufficient for the most central demand and easy to implement and use for both platform and users.

There is a fly in that ointment. eBay includes second hand goods and therefore can reasonably include products from companies that are not Games Workshop or have a current licence from Games Workshop. Forgeworld perhaps is in this category, though it is purportedly independent.
Games Workshop has had in its history very few third party licences, but it has had some.
Space Crusade miniatures are legal 40K miniatures, but not produced by Games Workshop.
Armorcast also produced resin miniatures, including some very large ones under licence from GW.

The problem here is that GW are keen to disavow old stock even from their own production. They don't like the second hand market, going to some lengths to limit usage of miniatures they produced let alone third parties. Armorcast titans get no love, so GW cannot be relied upon to police the categories.

I think the safest delimited is 'official' 'licensed' or 'authorised' versus 'unofficial' 'unlicensed' or 'third party'. I think licensed and unlicensed is the cleanest separation. GW will have to tolerate second hand Space Crusade and Armorcast lots in with licensed products, but they are exceptionally rare anyway.

I have to know, who actually searches by category? Do people actually use eBay to browse broad categories like 40k? Is this really a thing?

When I'm on eBay, I use keywords to bring up the specific items I'm looking for. I always thought the category thing was a way for eBay to keep their databases sorted so they can sell the info to advertisers.

 Breotan wrote:
I have to know, who actually searches by category? Do people actually use eBay to browse broad categories like 40k? Is this really a thing?

When I'm on eBay, I use keywords to bring up the specific items I'm looking for. I always thought the category thing was a way for eBay to keep their databases sorted so they can sell the info to advertisers.

I use categories when searching for specific things like a specific bit because GW uses so many common words and terms that you have to sort out the non-wargaming items and books or albums that share names with BL books or GW characters.

 Breotan wrote:
I have to know, who actually searches by category? Do people actually use eBay to browse broad categories like 40k? Is this really a thing?

When I'm on eBay, I use keywords to bring up the specific items I'm looking for. I always thought the category thing was a way for eBay to keep their databases sorted so they can sell the info to advertisers.

The classic example of when it's useful to use ebay categories would be if you're searching for something like "Dune". Do you want the book or the dvd/blu-ray?

 Tyran wrote:
It is definitely possible that GW is overreaching, but trademark law is complicated to the point that a lawsuit could go either way.

Another point to consider is that GW might not have over-reached but Ebay implementing the guidelines might have over-reached in how they applied filters and such to sift out the content and then remove it. So this could well be a case where GW did nothing wrong nor anything surprising, but where automated or simplified systems resulted in a lot of false positives getting hit as well as legitimate targets.

bobthe4th wrote:

 Breotan wrote:
I have to know, who actually searches by category? Do people actually use eBay to browse broad categories like 40k? Is this really a thing?

When I'm on eBay, I use keywords to bring up the specific items I'm looking for. I always thought the category thing was a way for eBay to keep their databases sorted so they can sell the info to advertisers.

The classic example of when it's useful to use ebay categories would be if you're searching for something like "Dune". Do you want the book or the dvd/blu-ray?

I would just add "dvd" or "blu" to the search. Also, a lot of stuff is miscategorized, either by not drilling down or by putting into the wrong bucket. Is a kit Necromunda? Kill Team? 40k? All the above?

Well, whatever works, I guess. I just don't know how GW can enforce a copyright claim for category use.

I hope GW doesn't find out about this...


http://www.warhammermotorsports.com/

Racerguy180 wrote:
I hope GW doesn't find out about this...


http://www.warhammermotorsports.com/

That is a typical case where you do not have the possibilty of brand dilution, because the two types of buisness are very far removed from each other and could not be conflated by a reasonable average customer.

Tsagualsa wrote:

Racerguy180 wrote:
I hope GW doesn't find out about this...


http://www.warhammermotorsports.com/

That is a typical case where you do not have the possibilty of brand dilution, because the two areas of buisness are very far removed from each other.

...you've not met GW's legal team, have you?

 Overread wrote:
Another point to consider is that GW might not have over-reached but Ebay implementing the guidelines might have over-reached in how they applied filters and such to sift out the content and then remove it. So this could well be a case where GW did nothing wrong nor anything surprising, but where automated or simplified systems resulted in a lot of false positives getting hit as well as legitimate targets.

OP provided the email he was sent by GW legal in post #1.

Did everyone just miss where the OP said he already had legal guidance? I'm a big GW fanboy, but this is starting to smack of overreach.

 RedDogMinis wrote:
Given that I was one of the defendants in the CH case I had my stuff labeled properly and also had disclaimers explicitly stating it was not GW brand. Title likewise stated proxy/alternative to avoid any confusion, but of course you are free to assume I never figured how to list things after getting actual legal counsel, the same one that helped slap down GW in court.

GW is out of is mind. If i was listing a used car for sale, I would list it as Chevrolet Corvette for sale. General Motors shouldn't come after me for selling my property which I legally purchased from GM or another seller.

I hope GW steps on the wrong toes and sees themselves in court. GW has narcissistic personality disorder and they need serious mental help.

Hopefully the consumers out there will wake up!!!

angel of death 007 wrote:
GW is out of is mind. If i was listing a used car for sale, I would list it as Chevrolet Corvette for sale. General Motors shouldn't come after me for selling my property which I legally purchased from GM or another seller.

The difference is that we aren't talking about used GW models being resold but 3rd party bits, and no you cannot sell a 3rd party car as a Chevrolet Corvette.

angel of death 007 wrote:
GW is out of is mind. If i was listing a used car for sale, I would list it as Chevrolet Corvette for sale. General Motors shouldn't come after me for selling my property which I legally purchased from GM or another seller.

I hope GW steps on the wrong toes and sees themselves in court. GW has narcissistic personality disorder and they need serious mental help.

Hopefully the consumers out there will wake up!!!

No, they aren't.

You wouldn't list a knockoff version of a car in the category for the proper thing.

In the same way, people shouldn't list unofficial 3rd party bits that aren't actually Warhammer, in either the Warhammer category and/or use the Warhammer trademarks in a way that can be confused with it actually being Warhammer, when it definitely isn't.

In general, the following uses are considered fair use:

Use in comparative advertising that is an opinion (or a truthful fact). Example:
Statement that “BRAND X tastes better than BRAND Z.”
Use to advertise goods that are being sold or repaired or for which a product is suitable for use. Examples:
Statement by a repair shop: “We repair ROLLS-ROYCE cars.”
Use of “iPhone” in non-stylized form on packaging for phone cases to indicate that it is usable with an iPhone......


.....Use of the GILLETTE trademark by a third party, to indicate that its blades are compatible with Gillette’s handles, will not infringe Gillette’s rights, even though the blades are an essential part of the Gillette product (razors) and not a mere accessory. In order to be non-infringing, however, the use must be necessary to indicate the intended purpose of the product and must be made in accordance with honest commercial practices.

https://www.inta.org/fact-sheets/fair-use-of-trademarks-intended-for-a-non-legal-audience/

 Breotan wrote:
I have to know, who actually searches by category? Do people actually use eBay to browse broad categories like 40k? Is this really a thing?

When I'm on eBay, I use keywords to bring up the specific items I'm looking for. I always thought the category thing was a way for eBay to keep their databases sorted so they can sell the info to advertisers.

It depends.

If I’m of a mood for some vintage toys to add to my collection, I might cast my net wide with Transformers. EBay will then suggest “Transformers - Action Figures” or “Transformers - Electrical”. Or throw up the Lou Reed album.

 Tyran wrote:
It is definitely possible that GW is overreaching, but trademark law is complicated to the point that a lawsuit could go either way.

Yeah, I think there's a bunch of legal ideas at play here that are yet to be tested. There's a few questions to be answered, that I think could go either way.

I do think some of GW's general IP policies are overreaching, but without examples of the specific cases that have been hit it's hard to general value judgement let alone a legal analysis.

But GW are going to push the limits (and possibly well beyond the limits) of what they're allowed to do because there's really no consequences for them. The absolute worst someone could do to GW is if a court finds a product was removed from sale that shouldn't have been removed from sale, they could try to go after GW for lost revenue, but the process one would have to go to in order to see that happen makes means it's not really much of a risk at all.

 Tyran wrote:

angel of death 007 wrote:
GW is out of is mind. If i was listing a used car for sale, I would list it as Chevrolet Corvette for sale. General Motors shouldn't come after me for selling my property which I legally purchased from GM or another seller.

The difference is that we aren't talking about used GW models being resold but 3rd party bits, and no you cannot sell a 3rd party car as a Chevrolet Corvette.

If people are selling third-party or knock-off parts as original, that is FRAUD, not trademark infringement, and the expected remedy is negative feedback/demands for refunds by the customers, who are the ones suffering actual harm.

If the parts are defective, GW might have a case in that their brand is suffering because of counterfeit parts, but again, you'd expect the purchasers to be the ones bringing the suit.

Commissar von Toussaint wrote:

 Tyran wrote:

angel of death 007 wrote:
GW is out of is mind. If i was listing a used car for sale, I would list it as Chevrolet Corvette for sale. General Motors shouldn't come after me for selling my property which I legally purchased from GM or another seller.

The difference is that we aren't talking about used GW models being resold but 3rd party bits, and no you cannot sell a 3rd party car as a Chevrolet Corvette.

If people are selling third-party or knock-off parts as original, that is FRAUD, not trademark infringement, and the expected remedy is negative feedback/demands for refunds by the customers, who are the ones suffering actual harm.

If the parts are defective, GW might have a case in that their brand is suffering because of counterfeit parts, but again, you'd expect the purchasers to be the ones bringing the suit.

My take is...

This might have been answered by the Chapterhouse case, but are you allowed to sell products with the express intention of them being used with Warhammer/WH40k? I believe the answer to that is "yes", as long as it's not infringing on artistic copyrights.

Then the next question is, if you can make products with the express intention of being used with Warhammer/WH40k, can you then use the trademarked terms Warhammer/WH40k? The answer to that is "it depends how you use it". It's quite a murky subject, some things are clearly not allowed, some things clearly are allowed, but there's a lot of middle ground that is vague.

Then the next question would be, can a 3rd party site that's hosting sales arrange it's categories using trademarked terminology like Warhammer/WH40k... I don't think that point is either addressed directly in laws nor has it been addressed in court cases (or maybe it has and my googling skills aren't there).

There's also this fuzzy line where you're not supposed to be able to exploit the good will established by a trademark commercially to sell your own products, which I'm sure many 3rd party product listings are trying do even if they aren't necessarily trying to confuse the customer. But you are allowed to use a trademarked term for comparative purposes or to indicate the intended use (but even the "intended use" thing is vague, and the Gillette razors case came with some clarifying points that might play against people using Warhammer compatibility as an argument).

Then of course there's a bunch of different jurisdictions that may decide different things, lol.

AllSeeingSkink wrote:


My take is...

This might have been answered by the Chapterhouse case, but are you allowed to sell products with the express intention of them being used with Warhammer/WH40k? I believe the answer to that is "yes", as long as it's not infringing on artistic copyrights.

Then the next question is, if you can make products with the express intention of being used with Warhammer/WH40k, can you then use the trademarked terms Warhammer/WH40k? The answer to that is "it depends how you use it". It's quite a murky subject, some things are clearly not allowed, some things clearly are allowed, but there's a lot of middle ground that is vague.

We know that it is legal to market things as upgrades/after market items for trademarked items. Whole industries exist for this purpose.

We also know that it is legal to sell cheaper versions of "name brand" items. I've got cabinets full of store-brand stuff that says "Compare to X!" or "Same active ingredient as X!" and they often use similar packaging.

I don't buy a lot of miniatures these days (and nothing for current GW games) so I don't know a lot about the topic, but has anyone actually come out and said: "Buy Cheap-o Miniatures! Same scale as GW Space Marines at half the price!" because I don't see any legal way they could stop that here in the US.

As a sidebar, I will note that third-party auto parts are always sorted by make and model (and year). Anyone who buys replacement headlights or wiper blades knows this. So sorting after-market miniatures the same way does have ample precedent.

I'm going to go drink some store-brand diet cola now, which has packaging very similar to that of Diet Coke, but of course, it isn't. I wonder of Coke will sue them for trademark violations.

AllSeeingSkink wrote:
Then the next question would be, can a 3rd party site that's hosting sales arrange it's categories using trademarked terminology like Warhammer/WH40k... I don't think that point is either addressed directly in laws nor has it been addressed in court cases (or maybe it has and my googling skills aren't there).

This is a pretty clear yes. Ebay is clearly using their category system descriptively to tell the user what is contained in the category, not to misrepresent any item or seller as something it isn't. It's no different from a physical retail store putting a "Warhammer 40k" label on the shelf next to their 40k products.

There's also this fuzzy line where you're not supposed to be able to exploit the good will established by a trademark commercially to sell your own products

That's not quite it. You can't use a trademark to sell your own product by exploiting customer confusion. It's absolutely valid to sell iphone accessories clearly labeled as "for use with iphones" and take advantage of good will towards Apple and their beloved products. What you can't do is sell your product in a way that makes the customer think you're the company that owns the trademark. The only way you'd get in trouble in the iphone case is if you used Apple's trademarks in a way that a reasonable customer would think that you are Apple. And in the 40k context most third-party sellers are fully in compliance with trademark law. It's irrelevant that their products sell because people love GW and 40k, all that matters is that the third-party seller is making it clear that they are a third-party seller selling products that are compatible with GW's products, not GW or a licensed partner of GW.


Automatically Appended Next Post:

 Mentlegen324 wrote:
In the same way, people shouldn't list unofficial 3rd party bits that aren't actually Warhammer, in either the Warhammer category and/or use the Warhammer trademarks in a way that can be confused with it actually being Warhammer, when it definitely isn't.

That depends entirely on how you view the category labels. If you consider the "Warhammer 40k" category to be only for official Games™ Workshop™ Warhammer™ 40k™ products then yes, it is inappropriate for third-party products to be there. If you consider the "Warhammer 40k" to be a more general category for items related to Warhammer 40k, including official GW products, third-party alternative products, modeling and painting supplies, dice, tickets to 40k events, strategy guides and painting books, etc, then it's absolutely reasonable for third-party items to be there. But in either case it would be a matter of ebay setting their own internal policies for how they wish to use their organizational system, GW has no legal entitlement to any say in the matter.

You can always sort by price high-> low to view the official stuff first

 Breotan wrote:

bobthe4th wrote:

 Breotan wrote:
I have to know, who actually searches by category? Do people actually use eBay to browse broad categories like 40k? Is this really a thing?

When I'm on eBay, I use keywords to bring up the specific items I'm looking for. I always thought the category thing was a way for eBay to keep their databases sorted so they can sell the info to advertisers.

The classic example of when it's useful to use ebay categories would be if you're searching for something like "Dune". Do you want the book or the dvd/blu-ray?

I would just add "dvd" or "blu" to the search. Also, a lot of stuff is miscategorized, either by not drilling down or by putting into the wrong bucket. Is a kit Necromunda? Kill Team? 40k? All the above?

Well, whatever works, I guess. I just don't know how GW can enforce a copyright claim for category use.

But that is using the categories, as the search bar will by default search the category. DVDs usually have DVD in the title, but if you go search "Dune book" it'll just pull up books. Most won't have "book" in the item title, but you'll see it's automatically filtering by category on "book"

Another example is if you're looking for a mobile phone. Type in just the phone name and you'll get tons of accessories designed for that specific phone. You have to filter on the actual device.


Automatically Appended Next Post:

Aecus Decimus wrote:

AllSeeingSkink wrote:
Then the next question would be, can a 3rd party site that's hosting sales arrange it's categories using trademarked terminology like Warhammer/WH40k... I don't think that point is either addressed directly in laws nor has it been addressed in court cases (or maybe it has and my googling skills aren't there).

This is a pretty clear yes. Ebay is clearly using their category system descriptively to tell the user what is contained in the category, not to misrepresent any item or seller as something it isn't. It's no different from a physical retail store putting a "Warhammer 40k" label on the shelf next to their 40k products.

Yeah that's a great analogy. And like you say it boils down to if it's then appropriate to have unofficial stuff on that shelf next to the GW stuff.

Does ebay have a "X company only official products" category and excludes the "non official" for other goods/companies/industries?

deano2099 wrote:
Yeah that's a great analogy. And like you say it boils down to if it's then appropriate to have unofficial stuff on that shelf next to the GW stuff.

Which, just to be clear, is a matter of store policy only. Both are equally legal under trademark law, it's just a question of how the store wants to organize their products and which system they think their customers will prefer.

Aecus Decimus wrote:

deano2099 wrote:
Yeah that's a great analogy. And like you say it boils down to if it's then appropriate to have unofficial stuff on that shelf next to the GW stuff.

Which, just to be clear, is a matter of store policy only. Both are equally legal under trademark law, it's just a question of how the store wants to organize their products and which system they think their customers will prefer.

Well, if you're selling new GW stuff, you're also bound by GW's conditions - yeah you can do what you want as a store legally, but it's what you can do and keep your GW trade account. I don't have one but I'd bet there's similar wording there - or possibly even stronger wording. I've certainly never seen a game store with GW stock on shelves next to "compatible" stuff. Not that I go to many game stores mind.

deano2099 wrote:

Aecus Decimus wrote:

deano2099 wrote:
Yeah that's a great analogy. And like you say it boils down to if it's then appropriate to have unofficial stuff on that shelf next to the GW stuff.

Which, just to be clear, is a matter of store policy only. Both are equally legal under trademark law, it's just a question of how the store wants to organize their products and which system they think their customers will prefer.

Well, if you're selling new GW stuff, you're also bound by GW's conditions - yeah you can do what you want as a store legally, but it's what you can do and keep your GW trade account. I don't have one but I'd bet there's similar wording there - or possibly even stronger wording. I've certainly never seen a game store with GW stock on shelves next to "compatible" stuff. Not that I go to many game stores mind.

It'd be interesting to know if GW can legally tell a store not to sell competitors products, that sounds like anti-competitive behaviour.