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 Holdenstein wrote:
Thanks Czakk.

A question for us non-lawyers. Is it usual in the US to ask for reconsideration of summary judgements? It didn't seem that Judge Kennelly was delighted about it last time round, but Chapterhouse are going for the same play again with the Trademarks.

It happens, but it is not terribly common. Judges do not like to reconsider their rulings, and you have to have a solid basis to make such a motion, which is spelled out pretty clearly in the federal rules of civil procedure. If you read the Court's memorandum and opinion concerning the motion to reconsider, it goes through the basis on which such a motion is proper.

However, opposing counsel failing to produce relevant evidence that the Court therefore could not consider when making its original ruling is an ironclad basis for a motion to reconsider.


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UNCLEBADTOUCH wrote:
So is GW's counsel asking to be able to sue over copyrights/trademarks that they don't have to prove they own? That doesn't seem right to me.

Okay, reading through the status report, here is a summary of what the parties are arguing:

Defendant is seeking a clarification from the Court regarding the affirmative finding in its SJ ruling that Plaintiff has proven priority of use. That is, the Court said that the Plaintiff has been selling products longer than the Defendant, and the Defendant is in fact using at least several of the Plaintiff's asserted marks, so it is somewhat pointless to be arguing that the Plaintiff did not use the marks before the Defendant did (leave aside for the moment the Tervigon issue).

Defendant is asking the Court to clarify that its ruling does not include a finding that the Plaintiff has proven the actual use of a trademark as the law defines it, but rather that if a trademark has been used, that such use is prior to Defendant's use. Defendant is essentially asking the Court to clarify that the Plaintiff is still required to prove the existence of all asserted trademarks in court.

Plaintiff says that this is improper for 4 reasons:

1 - Defendant is inappropriately raising an affirmative defense. Here the Plaintiff cites no case law. The Defense is not bringing up an affirmative defense, but rather elements of the Plaintiff's burden, requesting the Court to clarify the scope of its ruling vis a vis the Plaintiff's burden to prove the use of a trademark.

2 - The jury instructions do not include the type of nuance that Defendant is arguing Plaintiff is required to prove. Again, the Plainitff here cites no case law. The 7th circuit form jury instructions describe the elements that a Plaintiff must prove, and again, the Defendant is asking the Court to clarify what it has ruled the Plaintiff has actually proven by its submission of the 2004 sales data.

3 - Defendant has raised no facts to support its arguments. Again, Plaintiff cites no case law on this point. Also, as one can probably glean by now, the Defendant is pointing to elements of the Plaintiff's burden of proof, not the Defendant's. So what the Defendant is saying is that the Plaintiff has not shown the facts to support a finding of trademark use, and arguing that it remains as a fact issue for the jury, i.e. the Plainitff needs to prove use of its trademarks in court.

4 - Case law cited by Defendant does not support its argument. Here the Plaintiff does point to case law. Plaintiff is saying that it can use a word, phrase, image, etc. buried in a book or something as long as it has a recognized association with the Plaintiff. "In Micro Strategy, the plaintiff used the phrase "intelligence everywhere" in a random way, buried deep in text, and not to identify any particular product or service." Again, Defendant is arguing that this is a factual determination that the jury should make and is seeking clarification from the Court whether or not its ruling on prior use in commerce encompasses an affirmative finding that Plaintiff has proven actual use of a trademark in every circumstance.

In support, the Defense basically says that we already know that the Plainitff has in fact admitted that is does not use certain of its asserted trademarks as, well, trademarks. The implication being that one cannot merely believe it when the Plainitff says 'we super serious use this as a trademark, bra'.

The Plaintiff is essentially attempting to burden shift, putting the onus on the Defendant whereas the Defendant is seeking to determine what the Court's ruling means in terms of the Plaintiff's burden.

If I am remembering correctly they had a similar argument over some of the copyright claims, GW trying to shut the door on what it called unplead affirmative defences and CHS say, hey those aren't defences those are elements that the plaintiff has to prove.

I believe it went CHS's way last time.


If they are repeating what looks like the same argument just over trademarks instead of copyright, this bodes poorly for the cooperatively put together claims chart.


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

On a related note - pushing the burden around vs time in trial and evidence produced.

Given the 20 hour limit for each side, can you imagine GW going through each of its alleged marks and explaining to the jury how sticking a chapter logo in page 86 of a rulebook makes it a trademark? Giant time suck.

Well, and Judge Kennelly appears to have a let-the-jury-decide sort of attitude. He denied Plaintiff's MIL with regard to Dr. Grindley (subject to another depo I believe) but all of that is coming in, which means scope of copyright is still on the table, regardless of what the Court ruled on the copyrightability of the shoulder pads.

I would not be surprised if the Court clarifies its ruling concerning priority of use, which would suck majorly for the Plainitff. This sort of stuff always happens before a trial date. I usually caution clients to not get either too excited or too bent out of shape about what a ruling COULD mean. The Judge will always clarify later, and it probably is not the extreme interpretation.

What is GW going to say about trademark use other than...erm...its totes in this book?

Is that a trademark, or just a word in a book?

"Expecto patronum!" Harry Potter trademark, or just a phrase in a book?

"Prisoner of Azkaban" Harry Potter trademark, or just the title of a single book?



Ford trademark, or just the drivetrain of the 2005 Escape? Does the average consumer look at that picture and immediately think, 'FORD', or is it just a picture of some thing inside the car? Important for sure, critical even, perhaps even the REASON one buys the product, but an identifier of the source of the product, no.

czakk wrote:
If I am remembering correctly they had a similar argument over some of the copyright claims, GW trying to shut the door on what it called unplead affirmative defences and CHS say, hey those aren't defences those are elements that the plaintiff has to prove.

I believe it went CHS's way last time.


If they are repeating what looks like the same argument just over trademarks instead of copyright, this bodes poorly for the cooperatively put together claims chart.


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

On a related note - pushing the burden around vs time in trial and evidence produced.

Given the 20 hour limit for each side, can you imagine GW going through each of its alleged marks and explaining to the jury how sticking a chapter logo in page 86 of a rulebook makes it a trademark? Giant time suck.

Out of interest, in the event that the trial did result in GW no longer being able to claim that a substantial number of their asserted trademarks are actually trademarks, would GW still be able to use those terms themselves, or would they be leaving themselves open to the same kind of bullying tactics they've been using on smaller companies for years?

 Yodhrin wrote:

Out of interest, in the event that the trial did result in GW no longer being able to claim that a substantial number of their asserted trademarks are actually trademarks, would GW still be able to use those terms themselves, or would they be leaving themselves open to the same kind of bullying tactics they've been using on smaller companies for years?

You can use a word all you want. Having a trademark allows you to prevent a competitor from using that word. So if GW lost on various asserted marks, it would be very difficult for GW to assert those marks in the future. It would not be a 100% preclusion, but it would make it incredibly impractical and potentially actionable. It is hard to say that you have a good faith basis to believe someone is infringing a piece of property that a jury of your peers found to be nonexistent.

The bigger problem for GW would be the loss of face to the public, including investors. When you describe your "defendable intellectual property" as a "fortress wall" and then spend hundreds of thousands of dollars to find out that you asserted rights that did not exist, that does not look very good. I mean, one might think that the Director of Intellectual Property did not know what he was doing, or that in house counsel is incompetent, or perhaps even that the Chairman of the Board has his head up his $%# and will say anything in an annual report to make the company seem like it is doing well. That is, I can imagine that someone might think such things were that to happen.

Well, there is a difference between:

a) GW failing to meet the burden required to prove that certain words or images are marks used in trade, and

b) CHS proving that GW had not used the words or images in a trademark manner and a jury saying so.


You could argue around (a) later. (b) would bring up issue estoppel problems for later cases.


Presumably, with (b), if GW revamped its IP policy and started being very careful about how it used unregistered words and images it considered to be its marks, it could assert trademarks in the future. The jury can't say "You can never trademark ASSAULT SPACE MARINE in the future".

czakk wrote:
Presumably, if GW revamped its IP policy and started being very careful about how it used words and images it considered to be its marks, it could assert trademarks in the future.

Yea, but with a much different date of first use. And if GW is found to not have used certain marks and someone else in the mean time, well, uses them in commerce or in fact has already used them in commerce that could pose some very sticky problems for GW. I could be wrong about this, but if a jury finds that as of June 13th, 2013 GW has not used a mark in commerce, subsequently establishing said use would have trouble proving any use earlier than June 13th, 2013.

It may go back all the way to the filing of the lawsuit though. I do not know how that would work out.

its been so long that I dont really remember...was it GW or CHS that wanted this to go before a Jury?

weeble1000 wrote:


The bigger problem for GW would be the loss of face to the public, including investors. When you describe your "defendable intellectual property" as a "fortress wall" and then spend hundreds of thousands of dollars to find out that you asserted rights that did not exist, that does not look very good. I mean, one might think that the Director of Intellectual Property did not know what he was doing, or that in house counsel is incompetent, or perhaps even that the Chairman of the Board has his head up his $%# and will say anything in an annual report to make the company seem like it is doing well. That is, I can imagine that someone might think such things were that to happen.

There is that email to the copyright office where Mr. Moskin kindly throws GW's previous counsel under the bus. Although I think we discovered that he was also incorrect about the issue.


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 ironicsilence wrote:
its been so long that I dont really remember...was it GW or CHS that wanted this to go before a Jury?

Originally, GW. Part of the scare tactics (filing in Chicago, filing at christmas, etc..) was demanding an expensive jury trial.

 ironicsilence wrote:
its been so long that I dont really remember...was it GW or CHS that wanted this to go before a Jury?

Both made a jury demand and neither has withdrawn it.


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czakk wrote:


There is that email to the copyright office where Mr. Moskin kindly throws GW's previous counsel under the bus. Although I think we discovered that he was also incorrect about the issue.

The simple way to say it is that this case has aired a great deal of GW dirty laundry. The stench may very well hang around GW for a while yet.

http://www.dakkadakka.com/dakkaforum/posts/list/3300/355433.page#5188869

Found the part of the thread where we talk about that email

Would a jury trial really be in CHS best interest. From a legal standpoint this trial seems rather complicated. I wonder if a jury of average people would be able to wade through any fancy talk and get to the actual core of the IP laws and such

 ironicsilence wrote:
Would a jury trial really be in CHS best interest. From a legal standpoint this trial seems rather complicated. I wonder if a jury of average people would be able to wade through any fancy talk and get to the actual core of the IP laws and such

Part of the reason for all this pre-trial malarky is to weed out the bs, and pare down the case to the essential facts and issues at conflict (not that it seems to have helped much). The same with the 20 hour time limit.

Good litigators will be able to present the facts and issues in such a way that a jury can understand them and come to a conclusion. Up to this point we have seen legal arguments intended to persuade a judge not a jury. They will shift gears when the trial starts.

The jury will also have the help of the pre-trial order from the judge, and then jury instructions from the judge.

 ironicsilence wrote:
Would a jury trial really be in CHS best interest. From a legal standpoint this trial seems rather complicated. I wonder if a jury of average people would be able to wade through any fancy talk and get to the actual core of the IP laws and such

The only other option is Judge Kennelly, so make of that what you will.

"We have spend hundreds of thousands of dollars to prove in a lawsuit that we invented Roman numbers, fur and halberds.
We don't do advertising because it would cost us hundreds of thousands of dollars."

 Kroothawk wrote:
"We have spend hundreds of thousands of dollars to prove in a lawsuit that we invented Roman numbers, fur and halberds.
We don't do advertising because it would cost us hundreds of thousands of dollars."

Well, that is funny. That is very funny.

If GW actually DID advertise, they might have had some meat to their trademark claims.

As it stands, 9/10 people have no clue who GW are.

Presumably the trademarks would be important within the context of the industry's regular customers.

I mean there must be trademarks on gene replication machinery, or hairdresser's equipment, that I've never heard of, and they aren't invalid just because of me.

 Aerethan wrote:
If GW actually DID advertise, they might have had some meat to their trademark claims.

As it stands, 9/10 people have no clue who GW are.

I suspect it's at least 99/100, and I wouldn't be surprised if it was 999/1000. (The latter implies that there are 300,000 people in the US who know what GW is.)

Sorry but i have to inject some humor here.

Does Moskin want people on the jury who are familiar with GW and its practices or not?

Sounds like a lose/lose situation on jury picking.

 Warboss Gubbinz wrote:
Sorry but i have to inject some humor here.

Does Moskin want people on the jury who are familiar with GW and its practices or not?

Sounds like a lose/lose situation on jury picking.

I think GW wants jurors who do know who GW are, don't know who CHS is, and who don't know how GW has behaved in the past with other companies. That is their ideal juror. Not sure how many of that person there will be in jury duty that day, but the odds of even getting 1 person like that are insanely slim.

I wouldn't say that. Their current business practices target "mommy and daddy's disposible income". There is a snowballs chance that there will be a surburbanite mom who drops the boy off at the local bunker on Sat with $30 in his pocket and picks him up at closing time.

That would probably be the ideal. They view GW as freeish babysitting.

 Aerethan wrote:

 Warboss Gubbinz wrote:
Sorry but i have to inject some humor here.

Does Moskin want people on the jury who are familiar with GW and its practices or not?

Sounds like a lose/lose situation on jury picking.

I think GW wants jurors who do know who GW are, don't know who CHS is, and who don't know how GW has behaved in the past with other companies. That is their ideal juror. Not sure how many of that person there will be in jury duty that day, but the odds of even getting 1 person like that are insanely slim.

And then CHS can protest the juror, right? Get those 1-2 people who *do* know about GW off the jury anyway.
On the other hand, I think it is possible that GW might be able to 'brainwash' the jury with the HHHobby rhetoric like their main customers. The jury will be sitting through lots of pictures and testimony about how full and unique GW's world is, and possibly not be exposed to the fact that other miniature wargaming companies exist and make models based on the same inspirations.

Claims chart status update.

Can you feel the cooperation flowing?

So this is just jockey for the best position prior to going into court?If they dont agree does the court just rule?

IANAL--but from a layman, that reads like;

"We cannot cooperate on the methods or material we will present to the jury as instructed, however we do agree on how best to tell you how we disagree about it"

On this particular matter, the court said something along the lines of "if I have to waste my time on this, I'm docking you trial hours".



Edit - Here is the exact quote:

The Court directs the parties to confer promptly and to attempt diligently, in good faith, to agree upon a system for identifying the intellectual property rights and allegedly infringing products that are at issue. A party’s failure to comply with this directive may result in a decrease in its allocation of time. The parties are to submit a status report regarding this issue by no later than May 7, 2013.

czakk wrote:
On this particular matter, the court said something along the lines of "if I have to waste my time on this, I'm docking you trial hours".



Edit - Here is the exact quote:

The Court directs the parties to confer promptly and to attempt diligently, in good faith, to agree upon a system for identifying the intellectual property rights and allegedly infringing products that are at issue. A party’s failure to comply with this directive may result in a decrease in its allocation of time. The parties are to submit a status report regarding this issue by no later than May 7, 2013.

Why do I have the feeling that GW is trying to wreck their own case with a judges decision that allows them to appeal?

Trasvi wrote:

 Aerethan wrote:

 Warboss Gubbinz wrote:
Sorry but i have to inject some humor here.

Does Moskin want people on the jury who are familiar with GW and its practices or not?

Sounds like a lose/lose situation on jury picking.

I think GW wants jurors who do know who GW are, don't know who CHS is, and who don't know how GW has behaved in the past with other companies. That is their ideal juror. Not sure how many of that person there will be in jury duty that day, but the odds of even getting 1 person like that are insanely slim.

And then CHS can protest the juror, right? Get those 1-2 people who *do* know about GW off the jury anyway.
On the other hand, I think it is possible that GW might be able to 'brainwash' the jury with the HHHobby rhetoric like their main customers. The jury will be sitting through lots of pictures and testimony about how full and unique GW's world is, and possibly not be exposed to the fact that other miniature wargaming companies exist and make models based on the same inspirations.

Read Dr. Grindley's expert report. What is amusing about it is that just by looking at the GW asserted works, he postulated that GW artists may have seen certain pre-existing works, and several of those EXACT works were found in GW's design studio.


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What did I say czakk? I believe I called it pretty accurately.


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weeble1000 wrote:

Moskin is probably going to pull the same shenanigans that he has been pulling for years, if his demonstrable pattern of behavior continues. I can imagine a paraphrase of the memorandum to look like this: 'Look, we tried to be reasonable, but opposing counsel needlessly objected to reasonable offers, wouldn't work with us, and it is their fault that we do not have a compromise. We should just be able to use the claim chart that has been around this entire case and they should be docked time for not cooperating.'

That is my bet, and I'll give odds.

My English teacher would have had a field day with the 364-main document. Looks like they used the B team to write it.