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I believe it's only a 'free for all' 10 years after it goes out of production. So that solves that. I think.

So.. presumably that means Zoats and Ambulls are fair game?

 Howard A Treesong wrote:

timd wrote:

 Sean_OBrien wrote:

Failing that, they want the courts to consider them as manufactured goods under UK law as they will have almost no protection at this point (the design right expires after 10 years or something along those lines).

Wow... just wow. So one possible result of this suit is that any GW figures/models made before 2002 would no longer have any copyright protection in the UK and USA?
If so, this is pretty mind boggling in terms of GW legal strategy fail and what would happen in the realm of garage production and eBay sales.

While that sounds great for recasters I find it unlikely that it'll actually work like that. Seems just a bit too easy that the right to use and reproduce the design of something just becomes a free-for-all after only 10 years especially when the original is still in production.

The specifics are something which I am less familiar with...I think we would need to find one of those legal types who wears a wig to court in order to get a specific interpretation of the law:

http://www.ipo.gov.uk/d-designright.htm

Protection is limited to the United Kingdom (UK), and lasts either 10 years after the first marketing of articles that use the design, or 15 years after creation of the design - whichever is earlier. For the last 5 years of that period the design is subject to a Licence of Right.

Further to answer the question of what a design is:

For the purposes of registration, a design is legally defined as being "the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or ornamentation.

And what a product is:

You can register a three-dimensional product such as an industrial or handicraft item (other than a computer program), or two-dimensional ornamentation alone, eg. a pattern intended for display upon a product, or a stylised logo. In all cases, the term "product" can mean things like packaging, get-up, graphic symbols, typographic typefaces, and parts of products intended to be assembled into a more complex product.

Again - there is a lot of stuff there, but I am inclined to view what GW sells as products with a protected design...not as art work with a copyright. How the court will view things...can't say for certain. If you read the deposition and expert report from the UK wig wearing legal expert...it seems to agree in principal with how I view things.

GW's defense is that it doesn't make a difference because of international copyright treaties which grant protection in nations which are signatories under their own laws (not under the laws of the creator's country of origin). The problem with that is that it only grants the copyright protection if it would qualify for copyright protection in the creator's country to begin with. So...if it is a design - well...GW will actually have to be creative in order to keep in business.

This all comes down to the fact the GW brought this on themselves.

They write rules for models they don't make, and they increase the prices of their products EVERY YEAR to the point where many of their fans simply can't afford what they could just two years ago.

They have created the 3rd party bits market all on their own. And have seemed to be completely blind to this fact and continue to grind on with their awful business practices that got them into this in the first place.

Another thing, is the information black out. They are doing this so that 3rd parties can't get a clue as to what's coming out and release their own version before GW does, thus nullifying any claim to copyright by GW.


Cliff notes: I don't want GW to go out of business because I do enjoy 40k. But I have to laugh at their self imposed predicament and their total inability to defend their position competently.

 Kroothawk wrote:
I still sympathize with Jes. He is in a awkward situation, when his superiors instructed him that being inspired by anything is a crime. He answers frankly enough to bring the not-of-this-world-view of GW's legal team into trouble, so they want to stop the protocol from being published.

Another proof that the design team are basically nice folks cursed with a crazy higher management.

That's my take, too... (I know this is a little late but this thread took off a bit and left me behind )

 A Town Called Malus wrote:

White Dwarf made it into Peep Show. Admittedly it was in the line "I'm cancelling. Cancelling out of shame. Like my subscription to White Dwarf!" so it wasn't exactly a good thing

Dakka ate my post! I swear I replied earlier.

Thats a shame, I could just imagine the converstion between Sheldon and Leonard;

S: That's it, I'm going to sue!
L: Don't you need to own the copyright before you can sue?
S: Well it never stopped Games Workshop!

(Sorry I'm working my way through all the DVDs)

Cheers

Andrew

 Sean_OBrien wrote:


The specifics are something which I am less familiar with...I think we would need to find one of those legal types who wears a wig to court in order to get a specific interpretation of the law:

I'm avoiding working on my thesis right now, I'll wander over to the library and see if there is a textbook on UK industrial design law.

czakk wrote:

 Sean_OBrien wrote:


The specifics are something which I am less familiar with...I think we would need to find one of those legal types who wears a wig to court in order to get a specific interpretation of the law:

I'm avoiding working on my thesis right now, I'll wander over to the library and see if there is a textbook on UK industrial design law.

Its good to be the king. As opposed to finishing up some end of fiscal year reports, I went ahead and read the case law which the CHS expert witness sited and followed up with the sited cases in those...several hundred pages later, I still feel more or less the same as I did before. Still don't claim to be an expert - but what I have read thus far more or less confirms my prior statement and beliefs.

Someone in the UK could actually find out for themselves by filing for a License of Right on one of the designs which are older than 10 years old. Have GW balk at that and then file for a Settlement of Terms of the License Right. That would cause the governing body to way in on whether or not GW is working under designs or copyrights. I am guessing that it would cause a good panic in Nottingham.

Well GW has at least one registered design:

http://www.ipo.gov.uk/rs-bin/RightSite/formexec?DMW_INPUTFORM=tpo/biblio&DMW_SEARCH_TEXT=2017484&PREVIOUS_FORM=BROWSE&PREVIOUS_SEARCH_FORM=NULL&BROWSER_TYPE=ie4

It expires in 2016.


Automatically Appended Next Post:
I'm reading through Chapterhouse's motion for summary judgement. There is some crazy gak in there:

"GW did not produce any sales invoices or purchase orders for any sales in the U.S. (or Illinois) for any product."

I know american discovery is different than up here, but really?

"“[t]here is no way for this Court [or CHS] to know that this alleged sales sheet bears any relation to reality and is not simply something Plaintiffs generated on a home computer for the purposes of this litigation.”" -- Pretty much accusing the opposing side of fabricating evidence - them's fighting words.


"GW has no evidence that the senders were from the U.S. (SUF 73-74.) Apart from the fact that there is no evidence these emails are from U.S. consumers, they do not evidence confusion. To the contrary, the senders are notifying GW legal about CHS, and it is clear they are not confused about the source of CHS’s products. GW’s own in-house counsel (and 30(b)(6) designee on confusion) forwarded one of these emails to a colleague noting “another one who clearly is not confused!”" --- Heh heh heh

Czakk,

I'm pretty sure the statement about GW not producing invoices or purchase orders is because in the original claim GW is claiming lost revenue due to CHS's products. The onus for this case is on GW to prove their sales were harmed.

Ah, no the sales data was sought with regards to the trademark claims.

Chapterhouse is arguing that GW has the onus to show that it actually used the specific trademarks in commerce in the US, and that it hasn't:

Chapterhouse Motion page 17 wrote:
GW cannot establish it sold product in U.S. commerce for any mark. Despite CHS discovery demands seeking evidence of use of GW’s marks in commerce and dates of first use,
GW provided only bare allegations of dates of first use in U.S. commerce for each alleged mark, but failed to specify the nature of the use for each mark or identify the Bates numbers for any corresponding documents. See SUF 52 (Rog. 18 Response); (SUF 54-56.) Kearney Decl. ¶83.

GW concedes that its U.S. retail stores do not carry its full range of products. (SUF 59.)

When asked “[w]hat records does [GW] have that demonstrate that this product was actually sold in the US?”, GW’s 30(b)(6) witness answered “I really don’t know.” As “a global company…centralized…in the UK,” “you would need to talk to somebody in the American business” about records that the “American sales business keeps…” (SUF 60-61.)

CHS served GW’s U.S. business, Games Workshop Retail, with a document subpoena and deposed it. (SUF 16.) Its 30(b)(6) witness confirmed that its stores do not carry the full range of GW’s products, and that it has no records to determine whether a particular product was actually sold in the U.S., and no records of dates or geographical locations of any product sales. (SUF 61.)

The GW motion says something to the effect of - but the Chapterhouse website had the trademarks listed.....

Page 19

"Games Workshop’s ownership and priority of use of its registered and unregistered marks can scarcely be debated here given the evidence of sales presented by Games Workshop (Undisputed Facts #1-2); by Chapterhouse’s having named all of its products using Games Workshop’s preexisting names and by Chapterhouse’s admission on its website that
Games Workshop owns all of the marks in issue."



I don't know jack all about US copyright law, but the impression I'm given when I read the motions side by side, claim by claim is that Chapterhouse is banging on the law and the facts, and GW is banging on the facts and sometimes the table.


Aside from all that, it is really really weird that GW refused / could not provide real sales data, couldn't provide contracts or employment records for it's sculptors and had to have in house counsel swear an affidavit about disappeared /lost contracts.

czakk wrote:

I don't know jack all about US copyright law, but the impression I'm given when I read the motions side by side, claim by claim is that Chapterhouse is banging on the law and the facts, and GW is banging on the facts and sometimes the table.

Mostly the table. They don't provide the basic facts which are needed in order to support their claim for valid marks. Even registering the trademark, in order for it to be valid - you must prove first use in commerce. Until that point, the mark itself is not a Trademark...it is just a logo, or sometimes just a word or three strung together.

The geographic data is important as well for a different reason. First - it must be sold in the US in order for it to have a valid trademark in the US. So, at a minimum they would need to demonstrate that. Second, in order for the district court to have jurisdiction on a claim, it must be sold within the district. Chances are that CHS will eventually concede that many of the items were sold in the district...however it will reflect badly on GW that they don't even have their act together to offer up the minimal level of support for their trademark infringement claims.

http://ia600405.us.archive.org/18/items/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.208.32.pdf

A long document, Andrew Jones under oath, starting at Page 226 of 244 (numbered in the document as page 213) stating that GW does have sales records for the US and can produce reports for individual SKUs.

Question: For example, if we are talking about the Space Marine Rhino vehicles that Games Workshop offers for sale, would it be able to determine the number of Space Marine Rhino vehicles sold in the US in the last
fiscal year?

Answer: Yes, I would hope so.

So, when they said they couldn't produce them....


With regards to the whether or not the trademarked items in question were ever sold in the US:

Q Again, so the retail range in the US typically consists of around 800 to a thousand different products.

A Something like that, yes.

Q What is the overall range of products offered by Games Workshop?

A I don't know the total number but it is perhaps 2,000 to 3,000 products in the real extended range.

GW admits that 2/3rds of their trademarked products aren't normally sold in the US and GW didn't provide real sales data... really starts backing up their 'you can't prove you sold it here' defence.


Before this there are some interesting questions around licensing agreements with regards to Sabertooth Games and Fantasy Flight.

This is a fun deposition.

Is this whole suit unique in the apparent quality of the lawyers on both sides (One apparently competent and one apparently decidedly not)? This whole thing seems to me like it's a looney toons of what actual proceedings should look like

A It was a long time ago. We were early

adopters, we were not slow in coming forwards with the web, but as to an actual date, I would be guessing.

Ell Oh Ell.

PDF page 17 of http://ia700405.us.archive.org/18/items/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.208.34.pdf

Q What are the copyrightable elements that Games Workshop contends is being infringed by Exhibit 102, the Chapterhouse product in front of you?

A It is the size, the shape, the context. There's lots and lots of textural elements, both on the illustration and actually on the page, and in fact throughout the whole book from which this page has being photocopied.

Q You mentioned the size, the shape and the context. What's specific about the shape?

A It is kind of roundish, a bit like an American softball, roughly, in shape.

17 Q So Games Workshop contends that it has a copyright on the roundish shape about the size of an American football?

MR. MOSKIN: Objection.

Heheh.

czakk wrote:
Ah, no the sales data was sought with regards to the trademark claims.

Sales data may well be needed for both trademark use and sales losses.

czakk wrote:

Chapterhouse is arguing that GW has the onus to show that it actually used the specific trademarks in commerce in the US, and that it hasn't:

That is the case. GW has provided no proof that any of the trademarks were ever used in commerce or that any of the infringed products were ever sold in the US or in the district. There needs to be a valid paper trail which GW probably could have easily provided, but did not.

As Sean says:
"The geographic data is important as well for a different reason. First - it must be sold in the US in order for it to have a valid trademark in the US. So, at a minimum they would need to demonstrate that. Second, in order for the district court to have jurisdiction on a claim, it must be sold within the district. Chances are that CHS will eventually concede that many of the items were sold in the district...however it will reflect badly on GW that they don't even have their act together to offer up the minimal level of support for their trademark infringement claims.

 darkPrince010 wrote:
Is this whole suit unique in the apparent quality of the lawyers on both sides (One apparently competent and one apparently decidedly not)? This whole thing seems to me like it's a looney toons of what actual proceedings should look like

It might come down to the instructions each side has recieved. and the relative merits of the case. There is only so much you can polish a turd.

czakk wrote:

13 Q You mentioned the size, the shape and
14 the context. What's specific about the shape?
15 A It is kind of roundish, a bit like an
16 American softball, roughly, in shape.
17 Q So Games Workshop contends that it has a
18 copyright on the roundish shape about the size of an
19 American football?
20 MR. MOSKIN: Objection.

The objection is based upon the fact that GW thinks they own the shape of the American SOFTBALL, not football, as asked. A sphere; they own the rights to a sphere.

Lawyers talking back and forth:

[GW]MR. MOSKIN: Why don't we take a short break.

MR. OH: How about we continue.

[GW]MR. MOSKIN: No, because I want to take a short break and speak with the witness.

Probably only interesting to me, but in my jurisdiction talking to your client while they are in the middle of doing a deposition is a big no no. By the book you aren't really even supposed to sit with them if there is a lunch break.

Also interesting to see how much trash talking Merret does about Chapterhouse's casting and sculpting quality. Even refuses to touch a resin piece because it might be toxic.

8 MR. MOSKIN: The witness has agreed to give you
9 another 30 minutes. We are continuing the rest of
10 this deposition under protest. Please try to make use
of the time wisely.
12 MR. OH: Again for the record, 30 minutes is less than
13 the aggregate two hours that previously counsel agreed
14 to, and again we are conducting the rest of this
15 deposition under protest also.
16 MR. MOSKIN: You are? Okay, good. You have already
17 had more than 44 minutes that you requested when we
18 broke off Mr. Merrett's deposition. Let's go ahead.
19 Not to mention the time wasted yesterday when he was
20 available all day, all afternoon.
21 MR. OH: Mr. Moskin --
22 MR. MOSKIN: Oh, Mr. Oh, oh, oh, oh.
23 MR. OH: This is characteristic --
24 MR. MOSKIN: It is very characteristics of you.
25 MR. OH: Of you.

Wow, talk about unprofessional.

Who needs sitcoms when we have this??

LOL

 kirsanth wrote:

The objection is based upon the fact that GW thinks they own the shape of the American SOFTBALL, not football, as asked. A sphere; they own the rights to a sphere.

Hey if Apple can own the rights to a rectangle with rounded edges....

Had a scattered thought re: sales data and licensing - witness for GW mentions not knowing exactly what subsidiaries are out there and which one has signed licensing agreements because some of the corporate structure is set up for tax purposes.

If I was GW, I'd have assigned the trademarks and copyrights to some shell company in bermuda / ireland / netherlands and be charging massive fees to the UK and US companies to strip the profits out. I wonder if some of that is going on.


Meandering on....

Q What documents have Games Workshop provided to the defendants showing the trademarks used on a product for each of the years associated with these dates?

A Games Workshop, to the best of my knowledge, has supplied you with possibly tonnes, certainly pallets full of documents about this case. Gill Stevenson, who heads our legal team up, has got all the details of that. I can't tell you exactly which of these hundreds of trademarks we have actually sent you products about.

Sounds a bit like the left hand doesn't know what the right hand is doing with regards to the lawsuit, if the Head of legal thinks they've turned over pallets of info.

czakk wrote:
because some of the corporate structure is set up for tax purposes.

Interesting statement there, as companies get tax breaks for certain things unless they do those things specifically for the tax benefits.

 skyth wrote:

czakk wrote:
because some of the corporate structure is set up for tax purposes.

Interesting statement there, as companies get tax breaks for certain things unless they do those things specifically for the tax benefits.

Sorry but I do not see the finance side of GW remotely able to structure a double irish tax strategy.

 skyth wrote:

czakk wrote:
because some of the corporate structure is set up for tax purposes.

Interesting statement there, as companies get tax breaks for certain things unless they do those things specifically for the tax benefits.

Works a little differently outside of the US. You guys have an economic substance over legal form doctrine where as most of the commonwealth still uses legal form over economic substance - unless there is a specific anti-avoidance rule in the UK tax code they'd be good to go.

The IP originated in the UK so the IRS can't really contest it's transfer to a tax haven, and from there it is just a matter of justifying the fee charged to the US sub.


Automatically Appended Next Post:

 Absolon wrote:

 skyth wrote:

czakk wrote:
because some of the corporate structure is set up for tax purposes.

Interesting statement there, as companies get tax breaks for certain things unless they do those things specifically for the tax benefits.

Sorry but I do not see the finance side of GW remotely able to structure a double irish tax strategy.

They should all be fired if they didn't at least try it.


Automatically Appended Next Post:
Heh - with regards to not having any records of sales to produce for the defendant:

Taken from http://investor.games-workshop.com/wp-content/uploads/2012/07/Final-group-accounts-3-June-2012.pdf

Chairman's Preamble:
"My favourite graph in our internal reporting shows the sales in each country going as far back as we have records. 1988, I believe. The really great part about it is that it has over 20 years of data. You can see proper trends over 20 years, and if your intention is to build a business that lasts, which mine always has been, then ‘long term’ means decades."

Automatically Appended Next Post:
The only reason I even thought of a double irish is some of the testimony looks like a different sub company is signing licensing agreements

czakk wrote:

Sounds a bit like the left hand doesn't know what the right hand is doing with regards to the lawsuit, if the Head of legal thinks they've turned over pallets of info.

Head of licensing. To be honest, of all the depositions which have been revealed so far - I really feel sorry for him. He comes off as actually attempting to answer the questions honestly and to the best of his ability. He also believes that other people are doing their respective jobs (keeping and providing employment records, keeping and providing sales records).

There is a separate deposition (or at least portions of it) of Gill Stevenson (GW's Internal legal counsel). The specifics for her testimony are in reference to the email informants which GW had. The importance of that particular line of questioning was both to establish confusion caused by the manner in which CHS used the GW trademarks nominatively as well as to establish jurisdiction in regards to that claim by GW:

http://ia600405.us.archive.org/18/items/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.213.22.pdf

You can read the emails in Exhibit 122 there, and it is fairly clear that the only confusion is relating to general IP law and not whether those were official GW items. The other thing of note are the regions from which the emails originated. Two are quite clearly from the UK (one bears a yahoo.co.uk address and the other is a BT internet address) the third email which is part of GW evidence to support their claim of confusion originated in Sweden (based on the final line of the message which indicates a http://dejting.se.msn.com/ - which would be a Swedish URL).

 Sean_OBrien wrote:

czakk wrote:

Sounds a bit like the left hand doesn't know what the right hand is doing with regards to the lawsuit, if the Head of legal thinks they've turned over pallets of info.

Head of licensing. To be honest, of all the depositions which have been revealed so far - I really feel sorry for him. He comes off as actually attempting to answer the questions honestly and to the best of his ability. He also believes that other people are doing their respective jobs (keeping and providing employment records, keeping and providing sales records).

There is a separate deposition (or at least portions of it) of Gill Stevenson (GW's Internal legal counsel). The specifics for her testimony are in reference to the email informants which GW had. The importance of that particular line of questioning was both to establish confusion caused by the manner in which CHS used the GW trademarks nominatively as well as to establish jurisdiction in regards to that claim by GW:

http://ia600405.us.archive.org/18/items/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.213.22.pdf

You can read the emails in Exhibit 122 there, and it is fairly clear that the only confusion is relating to general IP law and not whether those were official GW items. The other thing of note are the regions from which the emails originated. Two are quite clearly from the UK (one bears a yahoo.co.uk address and the other is a BT internet address) the third email which is part of GW evidence to support their claim of confusion originated in Sweden (based on the final line of the message which indicates a http://dejting.se.msn.com/ - which would be a Swedish URL).

man I hate it when these things just stop mid subject. >.<

I've probably said this already, but man...GW really should have left well enough alone. It just keeps looking worse and worse.

 Lordhat wrote:

 Sean_OBrien wrote:

czakk wrote:

Sounds a bit like the left hand doesn't know what the right hand is doing with regards to the lawsuit, if the Head of legal thinks they've turned over pallets of info.

Head of licensing. To be honest, of all the depositions which have been revealed so far - I really feel sorry for him. He comes off as actually attempting to answer the questions honestly and to the best of his ability. He also believes that other people are doing their respective jobs (keeping and providing employment records, keeping and providing sales records).

There is a separate deposition (or at least portions of it) of Gill Stevenson (GW's Internal legal counsel). The specifics for her testimony are in reference to the email informants which GW had. The importance of that particular line of questioning was both to establish confusion caused by the manner in which CHS used the GW trademarks nominatively as well as to establish jurisdiction in regards to that claim by GW:

http://ia600405.us.archive.org/18/items/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.213.22.pdf

You can read the emails in Exhibit 122 there, and it is fairly clear that the only confusion is relating to general IP law and not whether those were official GW items. The other thing of note are the regions from which the emails originated. Two are quite clearly from the UK (one bears a yahoo.co.uk address and the other is a BT internet address) the third email which is part of GW evidence to support their claim of confusion originated in Sweden (based on the final line of the message which indicates a http://dejting.se.msn.com/ - which would be a Swedish URL).

man I hate it when these things just stop mid subject. >.<

The depositions? Yeah it's annoying, but if you expect the judge or jury to read everything entered into evidence, you had better prune out anything non essential.