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There is a procedure for adding new infringing products to an on going case. Apple and Samsung have been adding newly released products to their on going patent dispute cases.

As far as the judge in the case being pleased / not pleased with the new case - he's probably asked for the case because he is already up to speed and it is an efficient use of judicial resources. Good case management.

What we really need is someone familiar with US Fed Court civil procedure to clue us in. - What does local rule 40.4 actually do - does it create a single proceeding or what?


There was also a case status conference call scheduled for the 15th, haven't seen that pop up on recap either.

Local rule 40.4 is nothing particulary significant all it means is that the judge thought it was related to a current case he is presiding and he requested it be transferred for that reason.

It doesn't really give us any insight into what is happening yet or how the judge will see the new action.

LR40.4. Related Cases, Reassignment of Cases as Related

(a) Definitions. Two or more civil cases may be related if one or more of the following conditions are met:

(1) the cases involve the same property;

(2) the cases involve some of the same issues of fact or law;

(3) the cases grow out of the same transaction or occurrence; or

(4) in class action suits, one or more of the classes involved in the cases is or are the same.

(b) Conditions for Reassignment. A case may be reassigned to the calendar of another judge if it is found to be related to an earlier-numbered case assigned to that judge and each of the following criteria is met:

(1) both cases are pending in this Court;

(2) the handling of both cases by the same judge is likely to result in a substantial saving of judicial time and effort;

(3) the earlier case has not progressed to the point where designating a later filed case as related would be likely to delay the proceedings in the earlier case substantially; and

(4) the cases are susceptible of disposition in a single proceeding.

It's 40.4(b)(4) and (3) that have me confused. It looks like the rule is intended to combine cases - given that discovery has closed and the first case is ready to go to trial, how could there not be substantial delay etc...

Unless he's kicking the whole thing to the curb in his summary judgement.

czakk wrote:
It's 40.4(b)(4) and (3) that have me confused. It looks like the rule is intended to combine cases - given that discovery has closed and the first case is ready to go to trial, how could it there not be substantial delay etc...

Unless he's kicking the whole thing to the curb in his summary judgement.

That's my thought - he's expecting his SJ ruling to be dispositive on many of the issues raised in the new complaint, too.

czakk wrote:


It's 40.4(b)(4) and (3) that have me confused. It looks like the rule is intended to combine cases - given that discovery has closed and the first case is ready to go to trial, how could it there not be substantial delay etc...

You are probably correct which could be interesting as W&S are already disputing the fact that GW introduced evidence past the discovery date, maybe I mised exhibit A in the original case but to me it looks new and quite upto date.

It could be the case that GW mentioned the case at the conference call which should have been on the 15th which would explain the request on the 16th for reassignment, effectively adding new complaints.

czakk wrote:
There is a procedure for adding new infringing products to an on going case. Apple and Samsung have been adding newly released products to their on going patent dispute cases.

...Which is a great timesaver if you assert cases are closely related, and a headache if you assert each point to be rather much different. Meh, I've heard arguments for both and while I feel it might be appropriate here it's not malicious per se to think/act otherwise

I'm with you on the reason for combining matters as an issue of efficiency (God knows any court system can use every shred it can scrape together of that )

 Aerethan wrote:



GW has license with the Tolkien estate, so that even if New Line backed out, a LotR game could be made. All it would mean is that 100% of the model line would be discontinued since Tolkien doesn't own that.

Wildly off topic, I'll not continue on it sorry.

While it is off topic, I'd like to note that there is a significant portion of the line now that could stay(anything Khandish, anything Arnor related, the Shire stuff, and the Mahud camel riders, half-trolls, et al.) as, while it shares the aesthetics of the movies, it's purely drawn from things mentioned in the various books and thus not tied to the New Line agreement(hence why the 4 main hobbits, Grima, and Sharky models couldn't look like the actors in the Scouring of the Shire box set). They actually talked about that in the White Dwarf it was released in.

But, any further discussion on this should be taken to its own thread.

Bolognesus wrote:
Well, it's not called that for starters. Res Iudicata is the term you're looking for, as mentioned before on this topic.

Thanks! must have missed it in the first 104 pages!

czakk wrote:
It's 40.4(b)(4) and (3) that have me confused. It looks like the rule is intended to combine cases - given that discovery has closed and the first case is ready to go to trial, how could there not be substantial delay etc...

Unless he's kicking the whole thing to the curb in his summary judgement.

It is important to actually look at the new claims (or lack there of) and compare them to claims in the first case. After that - look to see whether or not anything in the new claims has not reasonably been covered on previous depositions.

I haven't had a chance to pick them all out - but the only thing which is really "new" is the Storm Raven conversion kit (again - don't shoot me if I missed something). Everything else is already on the existing GW claims chart for the first case. That means GW will have almost no new discovery to conduct on there side (especially since the claim on that item is a Trademark claim not a copyright claim...so the design process is irrelevant).

CHS would than have to argue that they want to do discovery on those new claims - which while it might be fun to drag a few GW designers out of the ivory tower again...I don't think they would have much practical interest in any further discovery (as far as I can tell - they have as much as they will probably need in order to present their case).

I was more thinking about the CHS pleadings about excluding GW evidence submitted after the close of discovery. Say for instance they prevail (or would have prevailed) on that point, but now we have new claims requiring new discovery / new evidence. Is filing the new suit that was bound to be moved a clever way of re opening discovery?

Are the court rules flexible enough to allow new GW evidence on the new claims without having any new GW evidence introduced apply to the old claims?


That is if the application of rule 40.4 creates a new merged proceeding. If all it does is shift the new case over to Justice Kennelly then all we have is res judicata stuff discussed pages back.

I see your train of thought. Not too sure about how much of a real impact it would have though.

Again, if you evaluate the new stuff (and late evidence) against the old claims - you should be able to draw some clear lines.

This evidence relates to that old stuff...so it is definitely out. This new claim relates to the same effective claim as the old claim - so it doesn't need new evidence (beyond just the statement of fact that it exists).

My guess is that the judge read the new claim and saw it in a way similar to what I had (same old claims...or at least the same law applied to new items) and figures that he can handle it all in one go. He would probably want to see it over and out of his court sooner rather than later (I know parts of the transcripts sure seem to indicate that).

robertsjf wrote:

Bolognesus wrote:
Well, it's not called that for starters. Res Iudicata is the term you're looking for, as mentioned before on this topic.

Thanks! must have missed it in the first 104 pages!

Sorry if I appeared snarky, wasn't my intention

 Sean_OBrien wrote:
Just a reminder to those who are watching this case. The judge said the summary judgement would be released in 10-14 days...12 days ago. Should be popping sometime this week.

I will be out of town for the Thanksgiving Holiday though starting tomorrow night through Sunday, so if those from the Great White North, Down Under or the other side of the pond are interested - they will want to watch the Recap site.

http://archive.recapthelaw.org/ilnd/250791/

Hopefully a mod can edit the title when this happens so I know to check!

11/9/2012 254 Main 3 motion for leave to file

11/9/2012 255 Main 3 notice of motion

11/15/2012 256 Main 1 status hearing

11/15/2012 257 Main 1 order on motion for leave to file

There was a status hearing on the 15th, a motion and an order on the 9th and 15th that aren't showing up on RECAP - they are showing up on a third party pay site.

http://www.rfcexpress.com/lawsuits/copyright-lawsuits/illinois-northern-district-court/68828/games-workshop-limited-v-chapterhouse-studios-llc-et-al/official-court-documents/



Automatically Appended Next Post:
The motion is just a request by CHS to refile the confidential GW stuff under seal. The order covers both that and the 40.4 move, looks like it was by agreement:

"Defendant’s motion to file under seal is granted (254). By agreement, the Court finds case number 12 C 9086 (Judge Tharp) to be related to this case pursuant to Rule 40.4 and will request transfer of that case."

Status hearing just sets a new status hearing for 30th of Nov and vacates the trial date.

"MINUTE entry before Honorable Matthew F. Kennelly: Telephone status hearing held with attorneys for both sides. The final pretrial conference date of 11/20/12 and the trial date of 12/3/2012 are both vacated. Telephone status hearing, is set for 11/30/2012 at 8:00 am., California time. Plaintiff's counsel has set up a call−in number. (or, )"

Interesting that it's California time - someone going on vacation?

czakk wrote:


Interesting that it's California time - someone going on vacation?

Tom Kearny from W&S is in CA.


Just for anyone who has not seen it re the trial date:

253.0 MINUTE entry before Honorable Matthew F. Kennelly: The Co...

MINUTE entry before Honorable Matthew F. Kennelly: The Court anticipates ruling on the pending motions for summary judgment within the next 10-14 days. However, a recent development in the Court's trial schedule will necessitate a continuance of the trial date in this case to a date sometime after the first of the year. The case is set for a telephone status hearing on 11/15/2012 at 9:00 a.m. for the purpose of resetting the trial date. Plaintiff's counsel is to get defendant's counsel on the telephone and call chambers [MOD EDIT - Let's not post phone numbers on the forum, please? Thanks!]. (mk) (Entered: 11/07/2012)

Tim

11/27/2012 258 MEMORANDUM OPINION AND ORDER signed by the Honorable Matthew F. Kennelly on 11/27/2012: The Court grants defendant's motions for judicial notice [211 & 235] and grants both sides' motions for summary judgment in part and denies each in part [208 & 213] as more fully described in this Memorandum Opinion and Order. (mk) (Entered: 11/27/2012)

We have an order up on pacer:

http://www.archive.org/download/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.258.0.pdf


"For the reasons stated above, the Court grants Chapterhouse’s motions for judicial notice [docket nos. 211 and 235] and grants both sides’ motions for summary judgment in part and denies each in part [docket nos. 208 & 213]. In particular, and as described more specifically in the body of this decision, the Court finds pursuant to Rule 56(g) that Games Workshop owns certain works listed in its Claim Chart; that certain items listed by Games Workshop on the Claim Chart are entitled to copyright protection. In addition, Chapterhouse is granted summary judgment on Games Workshop’s copyright infringement claims with regard to the Chapterhouse’s products found in entries 8, 15–16, 25–26, 28–30, 32–33, 38–42, 44, 70–72, 81, 84–86, 88–89, 91–93, 96, 105, 107, and 109 on the Claim Chart. Finally, Chapterhouse is granted summary judgment on Games Workshop’s federal and state dilution claims (Counts 4 and 5)."





Automatically Appended Next Post:
235 is giger's painting.

Don't know what 211 is.

So, if I'm reading this right, the court decided that GW DOES own certain copyrights, but that CHS didn't infringe on them?

Is this the whole case, then, or is there more involved?

Thanks.

Eric

Still eating breakfast - haven't had time to read it in depth. We still have a case.

One thing I'll note on a quick skim is that the copyrightable ideas that are surviving involve a colour scheme or a paint job. Have to think about this more, but maybe the lawyers failed to clue the judge into the fact that everything is sold unpainted. Or maybe it doesn't matter.

211 was the kkk / neo nazi symbols.


And I've lost track of where the current claim chart is located. Curses.

 MagickalMemories wrote:
So, if I'm reading this right, the court decided that GW DOES own certain copyrights, but that CHS didn't infringe on them?

Is this the whole case, then, or is there more involved?

The Court decided that GW does own some copyrights, but that there wasn't sufficient evidence for The Court to find for summary judgement either way. It'll go to trial.

CHS did win on dilution and a few other claims though.

czakk wrote:
We have an order up on pacer:

http://www.archive.org/download/gov.uscourts.ilnd.250791/gov.uscourts.ilnd.250791.258.0.pdf

I see the court noticed, and was unamused by, GW's shenanigans with the recent copyright assignment forms.

Think 211 would have been the nazi and anti semetic stuff which the judge referenced.

The judge didn't actually rule fully on the case, there is still enough left in play - in particular the core of the trademark claims - to allow the case to move forward to a jury trial.

Regarding the copyright claims long list of claims in the Summary of the Summary judgement (Chapterhouse is granted summary judgment on Games Workshop’s copyright infringement claims with regard to the Chapterhouse’s products found in entries 8, 15–16, 25–26, 28–30, 32–33, 38–42, 44, 70–72, 81, 84–86, 88–89, 91–93, 96, 105, 107, and 109 on the Claim Chart.) - that is a result of this:

In its Second Revised Copyright Claim Chart (“Claim Chart”), GW indicates that it is no longer pursuing copyright infringement claims regarding a number of products. Specifically, GW states that it does not claim copyright infringement for the products listed in entries 8, 15-16, 25-26, 28-30, 32, 38-42, 44, 70-72, 81, 84-86, 88-89, 91-93, 107, and 109 on the Claim Chart. Given the stage to which this litigation has advanced, GW cannot simply drop these claims without prejudice. Chapterhouse is entitled to summary judgment on Count 1 with regard to the products identified in these entries. - Page 6 of Document 258.

If you notice - a few of the ones which the Summary Judgement was granted on are ones which were not in the list of dropped claims. In those cases, CHS won the issue on their argued points (for example 33 and 105).

I still have to go through the list of claims and compare them to the findings to see which claims are still standing in full or part as well as tally up what has been cleared out of the way in favor of GW and which has gone to CHS.

When you are reading through the document it is important to keep track of everything as you go. For example, Claim 33 (Vehicle Icon for Flesh Tearers) - the summary judgement was denied on grounds that the object was utilitarian but granted on the grounds that the elements were common place.

I do believe that the judge made a faulty ruling in a few instances where he sites colors (for example the red color of the eyes on the Chaplain's helmet). Neither company sells painted figures and the red is not part of the products that they sell. I am trying to think of specific case law, but normally if the item is created and sold unpainted - the protected form is the unpainted not painted one.


Automatically Appended Next Post:
Looking over the words and the dismissed claims (the ones which GW withdrew and then the court said...nope, too late for that, but since you did - we will rule in favor of CHS on that) it is interesting to note that many are built on the shoulder pad which GW was found to be able to claim protection of.

That puts those products in a sort of interesting position as a result of GW dorking around with their claims.

When someone has the chance, could you post a list of the entries (text, not entry number) that received summary judgement and which are going to trial?

 Sean_OBrien wrote:
Looking over the words and the dismissed claims (the ones which GW withdrew and then the court said...nope, too late for that, but since you did - we will rule in favor of CHS on that) it is interesting to note that many are built on the shoulder pad which GW was found to be able to claim protection of.

I saw that and thought it was interesting... The judge ruled that the shoulder pad (in general) was okay to claim protection, but later ruled that a specific shoulder pad wasn't - because it was just geometric designs on a shoulder pad.

So blank pads are copyrighted, but if they're decorated they're fair game?

rigeld2 wrote:

 Sean_OBrien wrote:
Looking over the words and the dismissed claims (the ones which GW withdrew and then the court said...nope, too late for that, but since you did - we will rule in favor of CHS on that) it is interesting to note that many are built on the shoulder pad which GW was found to be able to claim protection of.

I saw that and thought it was interesting... The judge ruled that the shoulder pad (in general) was okay to claim protection, but later ruled that a specific shoulder pad wasn't - because it was just geometric designs on a shoulder pad.

So blank pads are copyrighted, but if they're decorated they're fair game?

I'd have to pull of the claim chart, but I think the judge is saying that the big shoulder pad is protectable and a common symbol + big shoulder pad is protectable but the symbol by itself isn't.

"Though the “flesh tearer” shoulder pad is copyrightable overall and thus could form the basis for an infringement claim regarding a similar shoulder pad design—as is the case for entries 12 and 13 on the Claim Chart—GW cannot claim copyrightability based solely on the circular saw and teardrop shapes alone. "

From the Summary:
"Chapterhouse is granted summary judgment on Games Workshop’s copyright infringement claims with regard to the Chapterhouse’s products found in entries 8, 15–16, 25–26, 28–30, 32–33, 38–42, 44, 70–72, 81, 84–86, 88–89, 91–93, 96, 105, 107, and 109 on the Claim Chart."

So 32 of the (110?) claims are gone, primarily because GW dropped its copyright claims on the items, so presumably these items are not copyrighted by GW any more?

Re giant shoulder pads, perhaps CHS lawyers need to look at WarZone figures that probably have the largest shoulder pads in existence. Don't remember GW suing them for copying GW's giant shoulder pads.

Tim

timd wrote:

From the Summary:
"Chapterhouse is granted summary judgment on Games Workshop’s copyright infringement claims with regard to the Chapterhouse’s products found in entries 8, 15–16, 25–26, 28–30, 32–33, 38–42, 44, 70–72, 81, 84–86, 88–89, 91–93, 96, 105, 107, and 109 on the Claim Chart."

So 32 of the (110?) claims are gone, primarily because GW dropped its copyright claims on the items, so presumably these items are not copyrighted by GW any more?

Tim

The dropped claims can't be used against CHS again, but could be against someone else.

I'm wondering what the courts would require to prove that a product was established and available at a particular point.

Do items like the GW catalogs apply as they have the names, part numbers, photos of products along with pricing in UK and UK prices along with mial in order forms with seperate US and UK addresses for placing orders at. The court documents already include them along with other books & material as registered to the company. Was this something not mentioned by GW's legal team or is it something that the court wouldn't accept as evidence?



Based on what I could understand

Non-protected elements:

piles of skulls

elements of design that would allow pieces to be used or mounted on GW parts ie, design of empty space that allows a part to be mounted over a marine arm.


Protected elements:

Specidfic shape of the shoulder pad

Specific shape of Landraider, Rhino, Drop Pod doors. Not considered to be functional elements in toys.

Color patterns when associated with other protected elements, red eyes on a marine helment. Blue on marine armor like ultramarines. Further compounded with iconry which individually isn't protected but in specific combination with protected elements becomes protected.

 paulson games wrote:
I'm wondering what the courts would require to prove that a product was established and available at a particular point.

Do items like the GW catalogs apply as they have the names, part numbers, photos of products along with pricing in UK and UK prices along with mial in order forms with seperate US and UK addresses for placing orders at. The court documents already include them along with other books & material as registered to the company. Was this something not mentioned by GW's legal team or is it something that the court wouldn't accept as evidence?

Still getting caught up on real work after the holiday, but the casual reading I have been able to give it would seem to indicate that GW didn't provide that level of detail. The catalog, while it covers most in question isn't normally enough. For each count, GW would need to say something like "page 105 of the 2007 GW Product Catalog" rather than just entering the whole catalog into evidence and expecting CHS and the judge to find the appropriate item in it.

The issue of fame regarding dilution is different. Just being sold is not enough to claim fame with regards to dilution. It has to have a certain level of recognition and broad distribution. GW stated that they don't track the recognition and their distribution is limited (no big box or other chain stores like Toys R Us or Hobby Lobby). That would limit their potential to claim fame without having specific research that demonstrates a high level of name recognition in the general population.

 paulson games wrote:

Specific shape of Landraider, Rhino, Drop Pod doors. Not considered to be functional elements in toys.

Color patterns when associated with other protected elements, red eyes on a marine helment. Blue on marine armor like ultramarines. Further compounded with iconry which individually isn't protected but in specific combination with protected elements becomes protected.

The shape of the doors wasn't ruled as non-utilitarian, the evidence of the utilitarianism which was presented by CHS didn't pass the bar which would allow for a summary judgement.

The color is still something that bothers me. I don't buy either product painted and comparing two unpainted products with two painted display pieces seems a bit off to me. Researching the case law on that though will take a bit more time, but considering that that was the crux of the decision for some things (the chaplain helm for example) it is an important point to clarify.

Oh noes, somebody send this guy a C&D letter pronto!



And now GW's going to sue Hasbro for making Heroscape


Mechwarrior's going to get a C&D any day now...


And the entire country of Japan is going to be bankrupted by GW suing them into oblivion!






Finally, somebody dig this guy up and drag him to court!


Seriously though, this ruling doesn't surprise me too much considering Apple can own a rectangle with rounded edges in the US...

See, law of unintended consequences, since it appears that GW has a copyright claim arguable in court as to who owns their army colour schemes, painting firms should be watching this one with interest.

Cheers

Andrew