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So, this may be a redundant question but, who's at fault on the GW side for not trademarking and copy writing everything for the US market?

Legal? Licensing?

Well, the trademarks were properly registered, and copyright exists as soon as you create a work of art. But for some reason Chapterhouse's lawyers caught GW with their pants down and GW wasn't able or wasn't willing to provide evidence that they actually used the trademarks in commerce in the U.S. or that their sculptors were employees.

At least that's how it looks from my Canadian perspective. American litigation is a bit backassward, especially around discovery, so there could be some cunning plan going on that I don't have the context or understanding to recognise.

czakk wrote:


At least that's how it looks from my Canadian perspective. American litigation is a bit backassward, especially around discovery, so there could be some cunning plan going on that I don't have the context or understanding to recognise.

Cunning plan by GW's lawyers? LOL!

I think the CH lawyers cunning plan was to snow the deposees with lots deposition questions (and there were lots of questions) in hopes that they will be overwhelmed and not do due diligence on the questions that really matter (which the GW lawyers should have keyed them on). It would appear that the plan has worked...

Tim

timd wrote:

czakk wrote:


At least that's how it looks from my Canadian perspective. American litigation is a bit backassward, especially around discovery, so there could be some cunning plan going on that I don't have the context or understanding to recognise.

Cunning plan by GW's lawyers? LOL!

I think the CH lawyers cunning plan was to snow the deposees with lots deposition questions (and there were lots of questions) in hopes that they will be overwhelmed and not do due diligence on the questions that really matter (which the GW lawyers should have keyed them on). It would appear that the plan has worked...

Tim

so, can you provide a better suggestion of how to defend against a broad claim that specifies everythign and details nothing? If there are so many inconsistencies and broad sweeping claims, the easiest way of destroying the claim is by doing what CHS has done. Lord knows, I've seen the same attempted whenever our firm filed claims, with the liability arguments lasting as longer than four years.

czakk wrote:
Well, the trademarks were properly registered, and copyright exists as soon as you create a work of art. But for some reason Chapterhouse's lawyers caught GW with their pants down and GW wasn't able or wasn't willing to provide evidence that they actually used the trademarks in commerce in the U.S. or that their sculptors were employees.

At least that's how it looks from my Canadian perspective. American litigation is a bit backassward, especially around discovery, so there could be some cunning plan going on that I don't have the context or understanding to recognise.

Only a few were properly registered and properly used. Most of their Trademark claims were not (other than a the big list which is often seen at the front of such books - not a valid method of registering Trademarks). You can search the registered marks fairly easily here:

http://tess2.uspto.gov/bin/showfield?f=toc&state=4007%3Av58f5r.2.1

When it comes to unregistered marks and the enforcement of registered marks they have to be able to provide the evidence supporting their claims of use in commerce. Regarding who generally dropped the ball...that would be the whole lot of them IMO. You can see their full list of claimed marks several different places - and in reading through it...you can also see deficiencies on many different levels (from the mark not being valid on the face of things like Halberd to the mark never being used in commerce).

 poda_t wrote:

timd wrote:

czakk wrote:


At least that's how it looks from my Canadian perspective. American litigation is a bit backassward, especially around discovery, so there could be some cunning plan going on that I don't have the context or understanding to recognise.

Cunning plan by GW's lawyers? LOL!

I think the CH lawyers cunning plan was to snow the deposees with lots deposition questions (and there were lots of questions) in hopes that they will be overwhelmed and not do due diligence on the questions that really matter (which the GW lawyers should have keyed them on). It would appear that the plan has worked...

Tim

so, can you provide a better suggestion of how to defend against a broad claim that specifies everythign and details nothing? If there are so many inconsistencies and broad sweeping claims, the easiest way of destroying the claim is by doing what CHS has done. Lord knows, I've seen the same attempted whenever our firm filed claims, with the liability arguments lasting as longer than four years.

IMHO CHS is doing the correct thing - it's GW's response that seems clownshoes.

timd wrote:
Cunning plan by GW's lawyers? LOL!

I think the CH lawyers cunning plan was to snow the deposees with lots deposition questions (and there were lots of questions) in hopes that they will be overwhelmed and not do due diligence on the questions that really matter (which the GW lawyers should have keyed them on). It would appear that the plan has worked...
Tim

IP litigation is complex. GW alleges over a hundred separate infringements, each of which requires a separate defense argument, which means a separate inquiry into the facts behind each.

Frankly, I'm surprised CH's lawyers were able to be as concise as they were.

 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).

To be clear his full title is "Head of Legal, Licensing and Strategic Projects". So I wouldn't feel sorry for the guy. He should know exactly what's going on, especially in something as important as this. His testimony showed him as totally incompetent in his position.

Regardless, GW has royally screwed the pooch. They could of simply taken the tact of, if not actively encouraging, at least ignoring 3rd party suppliers that picked up where they left off. 3rd parties help increase satisfaction with the products. Heck, the tervigon kit supplied by CHS even required you to purchase a GW model to use.

Instead, they lay trademark claim on items that have never been sold and copyright claim on such generic pieces like shoulder pads or guns or other designs that they pretty much took from history. I could almost imagine them as trying to claim trademark on "Archers with Bows".

Personally, although I like 40k and I do purchase quite a bit of stuff from them, I think GW needs to be properly backhanded on this.

Fortunately we've already seen some good things come out of it. Full miniatures for the listed items in the various Army books are finally being launched and additional products will be rolled out with white dwarf rule supplements. This is a great thing for the hobby. Heck, just seeing all of those different shoulder pads available for purchase straight from GW is awesome (and yes, I've ordered some).

I'd mostly agree with the above, especially as ch has been completely eclipsed in quality and quantity by many other excellent bits makers. GW are giving them more publicity than ch is generating with new interesting product at this point.

clively wrote:

To be clear his full title is "Head of Legal, Licensing and Strategic Projects".

My bad, I was actually getting his position confused with the position of Merrett. Hard to keep the specific titles of who is doing what with whom straight.

czakk wrote:

Also interesting to see how much trash talking Merret does ... Even refuses to touch a resin piece because it might be toxic.

My respect for that guy just dropped about 300%. What a gakker.

My respect for GW as a whole has kinda gone down the gakker after this thing. And I didn't have much left to begin with.

 Sidstyler wrote:
My respect for GW as a whole has kinda gone down the gakker after this thing. And I didn't have much left to begin with.

You have to spend money to make money. You have spend money to protect your IP's.

It was only a matter of time when a company that relies on bullying will get caught with their pants down. This is what I expected from the beginning as this company does everything on the cheap.

They are getting what they fully deserve for being cheap.

Besides the few things we have heard rumors about, how do you think that GW lossing this (I think it's inevitable) will change the way that they operate in the future?

 plastictrees wrote:
I'd mostly agree with the above, especially as ch has been completely eclipsed in quality and quantity by many other excellent bits makers. GW are giving them more publicity than ch is generating with new interesting product at this point.

I agree. To be honest I think the best outcome from here is if everyone forgets about this and chapterhouse and their horrible sculpts crawl off and die in a corner somewhere. After how badly they handled this, I'm sure GW would rather people forget about the whole thing, too.

Shepherd23 wrote:
Besides the few things we have heard rumors about, how do you think that GW lossing this (I think it's inevitable) will change the way that they operate in the future?

The seemingly obvious result would be that GW focuses more on ensuring that all options in each book are covered by the model range, so there is less scope for 3rd parties to fill the holes. Of course, in the short term that may actually result in fewer options being offered in books for armies with less complete model ranges... but in the long term would mean that each army book actually has a complete range, which IMO can only be a good thing.

Of course, that doesn't do anything to counter the companies that are offering cheaper alternatives to existing models. GW could use the economy of scale available to them through their far superior market presence to just lower prices to the point where it is no longer economical for smaller companies to compete... but I can't really see that happening.

 A Kvlt Ghost wrote:

 plastictrees wrote:
I'd mostly agree with the above, especially as ch has been completely eclipsed in quality and quantity by many other excellent bits makers. GW are giving them more publicity than ch is generating with new interesting product at this point.

I agree. To be honest I think the best outcome from here is if everyone forgets about this and chapterhouse and their horrible sculpts crawl off and die in a corner somewhere. After how badly they handled this, I'm sure GW would rather people forget about the whole thing, too.

While I can understand that they are not for everyone - they are apparently for someone. If not, GW would have never gotten to this point with them if they didn't think there was something they needed to stifle.

As far as what significant might come out of all of this...I think probably the most Earth shattering would be an opinion rendered by the judge which affirms the LucasFilm position regarding toy soldiers and design rights. That would effectively put 90% of GW products into the public domain because the way the design right statute is written. It would also put large portions into a position where they will not be able to become registered design because they lack the necessary newness or individual character. Some of the more recent figures like the Dark Eldar would be past the 12 month time limit for registering the design (which would put them into the 10 year unregistered design bracket - with a license right granted after 5 years).

If the judge further rules that things like the artwork for the Tervigon are not artwork, rather concept art (that is design documents) than they would also fall into the above categories.

GW would by necessity have to actually create new concepts and innovate. It would be pressure for them to do something other than rerelease 20 year old ideas in new packages with a higher price tag.

As a result, you would likely see a lot more "not" manufacturers pop up. The trademarks which are deemed valid would still be in place - but it would let people expand on the various IG units which were mentioned in past Codices but never brought into being in any meaningful way. Truescale, artscale and finescale versions would likely pop up by the truckload. In order to remain competitive, GW would have to reevaluate pretty much their entire existing business model, pricing and in store policies (not to mention force their hand with single army releases as opposed to these ridiculous waves).

 Sean_OBrien wrote:
While I can understand that they are not for everyone - they are apparently for someone. If not, GW would have never gotten to this point with them if they didn't think there was something they needed to stifle.

To be honest, I think this came down mostly to how CH went about it. I would be very surprised if companies like Puppets War and Maxmini aren't doing a boatload better in sales than CH... But the big difference for GW was that CH was the one promoting their 3rd party add-ons using GW's (alleged) trademarks. I would strongly suspect that was a much bigger factor for GW than how many people were actually buying this stuff.

To be fair, Puppet's War was founded in the year, GW started to sue CHS, and only had a dozen or so products back then. And CHS only released a handfull of new products in the last 2 years handicapped by the lawsuit.

I still see nothing wrong with the way CH went about advertising their products. They came out and said that this item was for this GW set. Maxmini, puppetwars and the rest hint at their intended use, but everyone in this hobby know exactly what they are intended for.

It's not some happy accident that all of Kromlechs ork bits and bodies have the same connection features that GW orks have. It isn't a coincidence that maxmini and puppetwars vehicle add-ons fit perfectly on GW Chimera and Rhino hulls.

Everyone complains that CH was purposely taunting GW with the way they advertised, I believe they were just being honest about what all other 3d party producers are doing as well. They all make bits that allow you to build stuff cheaper than GW, better/different than GW OR what GW hasn't produced.

So if you want to hate CH, then at least hate them because you don't like their work, not the way they work. It really is no different than what everyone else is doing.

There is a big difference, in the eyes of the law, between saying; "This is a Space Marine Shoulderpad" and "This is a shoulderpad compatible with Games Workshop Space Marines".

Steelmage99 wrote:
There is a big difference, in the eyes of the law, between saying; "This is a Space Marine Shoulderpad" and "This is a shoulderpad compatible with Games Workshop Space Marines".

Not really.

http://www.zagg.com/ifrogz/cases/apple-iphone-4

iPhone 4/4S Cases & Covers

No need to state that "this is compatible with".

http://www.roushperformance.com/parts/Ford-Mustang-Body-Kit-without-Wing-1999-2004.html

Ford Mustang Body Kit w/o Wing (1999-2004)

No need to state that "this is compatible with"

And of course some case law:

http://openjurist.org/411/f2d/350/volkswagenwerk-aktiengesellschaft-v-d-church

http://caselaw.findlaw.com/us-9th-circuit/1372669.html

And a summary of the current law in laymen's terms:

http://www.ipprospective.com/trademark-trend/a-law-report-nominative-fair-use-in-trademarks/

Since the dawn of the internet age - the disclaimers at the bottom of web pages have been found to be suitable in identifying (or making clear of a lack of) any connections with the originator of 3rd party parts. Still, since I don't recall the nominative use being contested at the Supreme Court level - it is something which they could rule as not being a valid defense. All the current cases have stopped withing their district court systems.

Hi.
Just to note the Case/Cover is an OPTIONAL extra for an Iphone.
And the page makes it clear it is a third party retailer of an acessory for another companies product..

And the advert for a Ford Mustang Body Kit IS PREFACED with the name of the company making it.To make it obviuos it is an after market alternative

Eg
Another Realm. Sci fi parts.

Shoulder Pads !!!
Your Games Workshop 40k(tm) Space Marines (tm) minatures are awsome! Add more variety with ARs range of shoulder pads that fit these cool minatures and those from other manufactures...

Is absolutley within fair use of trade mark use for defining intended pupose.
As it stated the owning companies TMs belonged to that company, and these after market replacement parts were designed to fit this particualr product.

40k(tm) parts for cool conversions and customisation!(Using GW plc trademarked logo for 40k.)
Space Marine (tm) Shoulder pads.
Pick from the full range of Index Astartes(tm) Codex Chapters(tm) and Chaos Marine Legions(tm) too!
(And then go on to show pictures of sample shoulder pads on GW plc minatures .)

IS NOT fair use of trademarks for intended use.But a blatent use to increase sales infering licence aproval of items by the frequent and flagrent use of owning companies trade mark .

CH was told they were in breech of trade mark use, and THEY CHANGED thier web page layout to conform.
(So CH DID breech trade mark use, and this issue was resolved.)

However , the follow up acusation of copyrite infringment, is not so well thought out or probably justiofied.
But I belive GW plc would NOT have jumped on CH without the original mis use of GW plc trademarks ...

Lanrak wrote:
Hi.
Just to note the Case/Cover is an OPTIONAL extra for an Iphone.
And the page makes it clear it is a third party retailer of an acessory for another companies product..

And the advert for a Ford Mustang Body Kit IS PREFACED with the name of the company making it.To make it obviuos it is an after market alternative

Eg
Another Realm. Sci fi parts.

Shoulder Pads !!!
Your Games Workshop 40k(tm) Space Marines (tm) minatures are awsome! Add more variety with ARs range of shoulder pads that fit these cool minatures and those from other manufactures...

Is absolutley within fair use of trade mark use for defining intended pupose.
As it stated the owning companies TMs belonged to that company, and these after market replacement parts were designed to fit this particualr product.

40k(tm) parts for cool conversions and customisation!(Using GW plc trademarked logo for 40k.)
Space Marine (tm) Shoulder pads.
Pick from the full range of Index Astartes(tm) Codex Chapters(tm) and Chaos Marine Legions(tm) too!
(And then go on to show pictures of sample shoulder pads on GW plc minatures .)

IS NOT fair use of trademarks for intended use.But a blatent use to increase sales infering licence aproval of items by the frequent and flagrent use of owning companies trade mark .

CH was told they were in breech of trade mark use, and THEY CHANGED thier web page layout to conform.
(So CH DID breech trade mark use, and this issue was resolved.)

However , the follow up acusation of copyrite infringment, is not so well thought out or probably justiofied.
But I belive GW plc would NOT have jumped on CH without the original mis use of GW plc trademarks ...

The first time I recall looking at their website - they had a disclaimer at the bottom (wasn't as large as it is now - but it was there). I don't recall ever seeing their website without one. GW has not entered evidence showing their website without one either - so I am hesitant to agree to that claim (might have been - just not since I have been looking).

And yet GW can't/won't prove ownership of any such trade marks as would have been misused.

So by the end of this we might see such marks being defaulted to whoever used them in commerce first. CHS may end up having the rights to sell X as a Space Marines Ultramarines Shoulder Pad.

Perhaps not. Either way, GW hasn't shown ownership of hardly a damn thing so far.

I may be mistaken, but pretty much anyone who has any actual knowledge of GW products is going to be able to determine that items they find on CH website are not GW items. The same goes for Maxmini, Kromlechs, Puppetwars and the rest of the 3d party producers. And do any Of them even have a GW disclaimer on their sites? I really wonder if GW came at CH because they believed that USA law might have been more on their side. I constantly hear about other countries not being very copyright/trademark friendly when it comes to companies outside their own country. Just look at China. GW could have a whole division of attorneys to prosecute all the knockoff artists over there.

Lanrak wrote:

CH was told they were in breech of trade mark use, and THEY CHANGED thier web page layout to conform.
(So CH DID breech trade mark use, and this issue was resolved.)...

Did they? Prove GW owns the trademark. Given the case so far, it hasnt been proven in court they OWN the trademarks.

Shepherd23 wrote:
I may be mistaken, but pretty much anyone who has any actual knowledge of GW products is going to be able to determine that items they find on CH website are not GW items. The same goes for Maxmini, Kromlechs, Puppetwars and the rest of the 3d party producers. And do any Of them even have a GW disclaimer on their sites? I really wonder if GW came at CH because they believed that USA law might have been more on their side. I constantly hear about other countries not being very copyright/trademark friendly when it comes to companies outside their own country. Just look at China. GW could have a whole division of attorneys to prosecute all the knockoff artists over there.

The difference there is that afaik none of those other sites use supposed GW trademarks in their descriptions. They are purely generic, and the only people who find them are people who are already looking for alternatives to what GW produce.

China couldn't care less about IP law. And at the end of the day, taking down 1 person in a country with well over a billion isn't going to make a dent. His brother/cousin/friend will just pick up where he left off and keep going. Same in Russia.

Now, GW could very easily price those companies out of existence, but they won't. To them, price=prestige. If they lower prices, they think it will lessen the perceived value of their products, which isn't true at all. I've stated it in several threads, that no one is buying GW because of any perceived high value. They aren't the Porsche/Mercedes/BMW/Bentley of models. 99% of the tech in a bentley can be found in almost any other modern car, but the people who buy bentleys buy them for the prestige and perceived value of them. GW is not Bentley. At all. They make toy models, many of which are cool looking, and many of which are terrible looking. Bentley doesn't make terrible looking cars. They only have the awesome ones.

GW is in no way a prestige brand, yet they behave as though they are.

 Aerethan wrote:

Now, GW could very easily price those companies out of existence, but they won't. To them, price=prestige. If they lower prices, they think it will lessen the perceived value of their products, which isn't true at all. I've stated it in several threads, that no one is buying GW because of any perceived high value. They aren't the Porsche/Mercedes/BMW/Bentley of models. 99% of the tech in a bentley can be found in almost any other modern car, but the people who buy bentleys buy them for the prestige and perceived value of them. GW is not Bentley. At all. They make toy models, many of which are cool looking, and many of which are terrible looking. Bentley doesn't make terrible looking cars. They only have the awesome ones.

GW is in no way a prestige brand, yet they behave as though they are.

I agree with you completely. GW has always stood by the belief that they are the best of the best and nothing else out there is even close to the quality that they produce. In reality (As I see it), they have the best sales. This is easily proven. They do NOT have the best models, individually or as an entire range. There are several companies that have produced better lines and better models. Personally, I find Space Marines to be horrible models that lack inspiration. It has always amazed me that they are the top selling model range in this hobby. I just do not see it.

All of the 3rd party marine bits do something to take a boring generic model and make it into something that is, at least, interesting. The CH rhino and drop pod add-ons for the Salamander-like chapters are a great way to add some interest to models that are otherwise flat and generic.

Its sad that GW has decided to step away from their roots. I remember when GW used to encourage individualizing your models/armies. Now they want every model out there to look like every other model. Its just sad to see how they have fallen.

 poda_t wrote:

timd wrote:


I think the CH lawyers cunning plan was to snow the deposees with lots deposition questions (and there were lots of questions) in hopes that they will be overwhelmed and not do due diligence on the questions that really matter (which the GW lawyers should have keyed them on). It would appear that the plan has worked...

Tim

so, can you provide a better suggestion of how to defend against a broad claim that specifies everythign and details nothing? If there are so many inconsistencies and broad sweeping claims, the easiest way of destroying the claim is by doing what CHS has done. Lord knows, I've seen the same attempted whenever our firm filed claims, with the liability arguments lasting as longer than four years.

I think you missed the point of my post. I was hypothesizing on what the strategy was. Never said it was not a good strategy. I think its was a very good strategy especially in light of the apparent ineptitude of GW's lawyers. They don't seem to be making a strong (professional) effort in this case.

Tim