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Since this could well go beyond the scope of the CHS thread...figured, it might as well be broke off as a seperate discussion...

Trasvi wrote:

 Sean_OBrien wrote:

And more importantly (at least in as much as I understand the convoluted court systems of the greater Eurozone...) - Poland, as part of the European Union would actually defer to matters of settled case law to the home country of the company who is bringing suit against them...and can further site rulings made by courts like the British Supreme Court. Since LucasFilm v Ainsworth fairly well settled the matter of toy soldiers not being protected under copyright law and instead being protected under design rights, and further design rights being greatly limited in scope and duration (all of which would be expired for the Space Marines given that the first design was in 1985 and the maximum duration of a design right being 15 years) - it would be a major blow to the various things which GW claims as there own should they attempt to bring suit to any of the various companies in the Eurozone who are making "not-Space Marines" like Scribor, Anvil Industries, Hitech et al. Some are based in Eastern European countries - but at the very least one of them is based in GW's own backyard.

Is this really the outcome of Lucasfilm vs Ainsworth? If it were the outcome, why aren't there half a dozen Star Wars miniatures manufacturers springing up in the UK?

Yes, it is really the outcome of the case. As to why you don't see knock offs of Star Wars and other figures in the UK and broader EU...most likely because most mini companies don't follow IP case news closely if at all. The second, and more practical is that there remains a certain level of exposure in jurisdictions which use copyright to deal with these sorts of things.

The pertinant files can be found here

http://www.bailii.org/ew/cases/EWHC/Ch/2008/1878.html

And here

http://www.supremecourt.gov.uk/decided-cases/docs/UKSC_2010_0015_Judgment.pdf

The first being the lower court ruling which set forth the test and the second being the Supreme Court that affirmed the test. The test is basically this, what is the primary use?

Next, it is necessary to consider the toy Stormtroopers, and other characters, which are taken as being reproductions of the armour and helmets for the purposes of section 52. These are, as already described, articulated models which are sold as toys and which are intended for the purposes of play. Play is their primary, if not sole, purpose. While their appearance is obviously highly important (if they did not look like the original, the child would not be so interested) they are not made for the purposes of their visual appearance as such. While there is no accounting for taste, it is highly unlikely that they would be placed on display and periodically admired as such. The child is intended to use them in a (literally) hands-on way, in a form of delegated role play, and that is doubtless how they are actually used. That means, in my view, they are not sculptures. They can be distinguished from the model in Britain which apparently had a significant element of being admirable for its own visual sake. That does not apply to the Stormtrooper, whose only real purpose is play. In reaching this conclusion I am not saying that the Britain model is better at what it portrays than the Stormtrooper model. That would be to make judgments about artistic quality, which the statute understandably forbids. It is making a judgment about whether there is anything in the model which has an artistic essence, in the sense identified above. I conclude that there is not.

Games Workshop, both through the name of their company and through various financial documents have already established themselves as being a company who makes toy soldiers...not an art house. Companies like Lucasfilm who make movies and toys based off from those movies fall in the same camp as well. Even costumes and props used in movies fall into this category generally, due to the nature and purpose of the props.

Presumably, then, I could set up a small company to make Star Wars model soldiers without a licence from LucasFilm, and if/when they sued me, I could use the judgement in the Stormtrooper helmet case as my defence.

How does it affect advertising? Could such figures be sold as "Star Wars"?

Correct... or any other comparable property for that matter. As to how you would advertise...look at Ainsworth's site

http://www.originalstormtrooper.com/

You will notice some use of trademarks and some generic terms.

 Kilkrazy wrote:
Presumably, then, I could set up a small company to make Star Wars model soldiers without a licence from LucasFilm, and if/when they sued me, I could use the judgement in the Stormtrooper helmet case as my defence.

How does it affect advertising? Could such figures be sold as "Star Wars"?

From the sound of it you could,

but you might have to have the funds in hand to survive a legal challenge that would probably take a long time with all the appeals they could afford to do (I'm sure Disney would give it a go),


and you might have to be careful about were you sold the stuff, within the EU you'd be ok, but outside the EU into juristictions (like the US) that interpret things differently no.

Not saying you wouldn't ever have to deal with legal issues, but it is unlikely and defending against suits when it is called out so clearly is pretty straight forward, especially given that it has gone to the Supreme court in the UK.

Because of the way that the various trade agreements are set up with the EU and between the UK and its various trade partners, the only real problem would be selling to customers in the US. Even there, suits filed in the US cant actually touch companies based outside of the US. Lucas actually won against Ainsworth in the case they filed here, but they have collected $0 from them because he doesn't actually do business in the US, so there is no manner for the courts to levy the win against his assets.

I expect one could attempt to get an importation ban, but those are not so easy to get.

And even harder to enforce, especially on the postal side of things. Pretty easy to stop a container load of knock offs (and yet thousands still get through each year) but finding a small box among the millions which travel through the various mail services...

I love you legal guys in these threads. This is a interesting case to read up on.

I don't think that case justifies other companies can copy GW sculpts no problem. The ruling clearly calls out that artistic sculptures and copy of such sculptures are protected by copyright. Lucasart lost the case because they had abandoned the notion that the helmet was cast from a work of art and was indeed just a prop.

Unless you want to argue that sculpting miniatures is not considered art.

Lucas didnt abandon the notion. They actually attempted to show that. However, the manner in which the object was used made it a toy as opposed to a work of art.

There is a practical difference between miniatures which are manufactured en masse as a toy used to play a game and those which are made by a company like Andrea Miniatures, which are made in much smaller quanities and their primary use is to be looked at.

You have to seperate you concept of what you think is art (as the judge did) and look at what an object isnused for. Something can be designed by an artist....perhaps a fancy spatula...but that doesn't make it any less of a spatula.

That fancy spatula can be registered as a protected design, and the artist would have exclusive rights to it for a period of time. However, eventually the design right expires...and other people can make the same fancy spatula or replacement parts for the fancy spatula.

 Sean_OBrien wrote:

There is a practical difference between miniatures which are manufactured en masse as a toy used to play a game and those which are made by a company like Andrea Miniatures, which are made in much smaller quanities and their primary use is to be looked at.

So by that notion, any miniature company that creates a game to use their miniatures for has essentially cut the protection of their figs?

silent25 wrote:
I don't that case justifies other companies can copy GW sculpts no problem. The ruling clearly calls out that artistic sculptures and copy of such sculptures are protected by copyright. Lucasart lost the case because they had abandoned the notion that the helmet was cast from a work of art and was indeed just a prop.

Unless you want to argue that sculpting miniatures is not considered art.

The key point about the judgement is that pieces for use, such as costumes, toys and toy soldiers, are not works of art and therefore are not protected by copyright.

silent25 wrote:

 Sean_OBrien wrote:

There is a practical difference between miniatures which are manufactured en masse as a toy used to play a game and those which are made by a company like Andrea Miniatures, which are made in much smaller quanities and their primary use is to be looked at.

So by that notion, any miniature company that creates a game to use their miniatures for has essentially cut the protection of their figs?

And?

I think the 15 years of protection which are possible for registered designs is plenty of time to make their money back on their costs. How long do you think they should have exclusive rights to something for?

Patents are issued for 20 years to protect a useful invention which might have cost hundreds of millions of dollars to develop, not to mention time spent perfecting the design or chemical formula...but a miniature that is sculpted over a weekend should recieve copyright protections that last decades after the designer had died?

No, I believe the limited duration of a design right is perfectly reasonable.

 Sean_OBrien wrote:

And?

And I'm not arguing that overall Copyright lengths are a problem here (even though I think they are). I was just surprised at the arbitrary view saying if a sculpt is used in a game, it is automatically a toy. Especially in table top games where artistic merit is highly valued and figures are displayed as pieces of art.

Also, came across this little primer from a European toy trade industry group explaining what is and isn't a protected. From my reading, the design right is UK only. The rest of Europe toys fall under copyrights
http://www.tietoy.org/publications/

Though, seeing that a toy can be protected for as long as you pay a fee is stupid.

Lots of things can be collected and displayed for their physical appearance. Some day I suspect I will inherit a collection of firearms from before the development of the percussion cap (mostly flint lock)...however, I wouldnt consider any of those to be art, even though at this point there only practical purpose is to look at.

The same would apply to a lot of miniatures I own, they may well be finally sculpted, but mass production and practical application both are more important to the product than the day or two spent sculpting them.

Regarding the Design right and the UK...yes, although it is a UK specific thing, the EU trade laws make it more than that. A product which is produced legally in the UK is able to be sold legally throughoutnthe EU and in many countries like Canada, Australia, New Zealand... and a much longer list that I have since forgotten...

Also, because of the way it is setup...a company like GW who wants to sue a company like Scribor would default first to UK laws to determine the applicable protection (which would be the design right). A company based in France though would have a copyright claim against a Polish company...bit of a ball of stringtrying to follow the path of treaties, terms and jurisdictions...

 Sean_OBrien wrote:

Also, because of the way it is setup...a company like GW who wants to sue a company like Scribor would default first to UK laws to determine the applicable protection (which would be the design right). A company based in France though would have a copyright claim against a Polish company...bit of a ball of stringtrying to follow the path of treaties, terms and jurisdictions...

But there, fire arms fall under a utilitarian definition. Just like your spatula example, it is a tool first, art second. We're disagreeing on miniatures being a tool first and art second. I believe they are art first.

One point back to the original LucasFilm suit. Double checked a couple news articles, Ainsworth cannot sell the helmets in the US. Is very likely a US only thing.

If GW loses the CHS lawsuit based on this, curious if they will move the miniature design studio to the US or other IP "friendlier" English speaking country.

But the reality is that toys, pieces for a game are utilitarian first and artistic second. For many years, it was common practice for games to ship with cardboard counters instead of miniatures. That is the first purpose. Miniatures were marketed later on to add some level of aesthetic appeal to those counters and markers.

For a company like GW specifically, it could be argued quite easily that were it not for the game and toy aspects...they would not exist, or at least not exist to the extent that they do now. The game is what sells the product first and foremost. It determines if a figure will be sculpted with a rifle, or a pistol and sword. Whether it will be wearing armor or carrying grenades. All of those point to the importance of the game over the aesthetic value.

Now, as the judge noted, if they look bad or didn't look like the fictional figures which they might be intended to represent...then they would loose some commercial value, but that is secondary to their primary use as pieces to play a game with.

The purpose really isn't a question of tool versus not a tool...rather the primary use and any secondary appreciation of an object for aestethetic reasons. Clearly toy soldiers have a primary use of being played with. Some people will collect them and never play with them...but that isn't their primary use.

Other companies who may do similiar work will however end up with a similiar product that has a primary use that is in fact to be looked at. Andrea Miniatures for example. The difference can be seen both in the way that they market their goods as well as to some extent the design and manufacturing process of the goods themselves (limited edition figures for example would likely be given a greater level of protection leaning towards artwork).

In Brian Ansell's recent interview on this blog, Ansell uses the phrase "toy soldier" 15 times.

"We had reached a point where Citadel had become quite successful in the context of the (very much smaller then) toy soldier "industry". It seemed like the right time to bring in people who could get us moving forward with more interesting toy soldiers. The more interesting toy soldiers could then lead to us building our own fantasy gaming system, which could be a tabletop rival to Dungeons & Dragons."

I think it is fair to say that GW makes toy soldiers.

Yep...curiously, GW seem to have changed their tagline sometime in the past few years from 'Games Workshop make the best toy soldiers in the world' to 'Games Workshop make the best model soldiers in the world.'

Their old financial documents though reflected toy soldiers quite frequently, and even the LSE listing category is reflective of selling toys and games.

http://www.londonstockexchange.com/exchange/prices-and-markets/stocks/summary/company-summary.html?fourWayKey=GB0003718474GBGBXSSQ3

 Sean_OBrien wrote:
Yep...curiously, GW seem to have changed their tagline sometime in the past few years from 'Games Workshop make the best toy soldiers in the world' to 'Games Workshop make the best model soldiers in the world.'

Their old financial documents though reflected toy soldiers quite frequently, and even the LSE listing category is reflective of selling toys and games.

http://www.londonstockexchange.com/exchange/prices-and-markets/stocks/summary/company-summary.html?fourWayKey=GB0003718474GBGBXSSQ3

And yet they deemed to keep the same company name. They are a "game company" not a modelling company. They put out game rules. They are going to plastic instead of metal. Now I have a better chance in a court of law showing a jury of my peers my pewter set of models and make parallels to artistic metal artworks, even as small as the 28mm models than to show them the plastic crack that Games Workshop Produces. The key word is "plastic" to a common jury, the subconscious mindset of an inferior material being used to make "toys" not not artistic works. Plastic is still engrained in the American psyche to this day as something that denotes "cheap".

There is a lot of things Games Workshop can do but chooses not to do them.

It can be argued that since a Space Marine is supplied as a kit of parts that can be assembled in numerous poses, the artistic creation -- the decision of how to assemble the parts -- is the act of the modeller rather than the sculptor.

That is the view a Japanese court took on the issue of machinima creations from video games.

And a plastic injection mold is designed to quickly reproduce thousands of copies. It is simply a form a mass production. And if it is mass produced, it is almost certainly to have a primarily utilitarian purpose.

Sean, wasn't there something in UK design law that discussed mass production, or am I misremembering?

Yes, they have a class which is referred to as works of artistic craftsmanship. For example, if a sculptor were to sculpt and handcast thier miniatures...they would qualify as WAC goods, which can qualify for copyright protections. That was the second line of defense Lucas used, but because of all the mass market toys of the same design as the prop armor...the judge ruled the Stormtrooper armor was not a WAC.

Because most sculpting and casting isnt done by the same person, the chances of WAC being applicable for many miniatures is slim...though some companies like Heresy are largely done by one man shows (pretty sure he casts his own...but has molds made by a 3rd party).

The opinion by Justice Mann is pretty long, but it really covers the vast majority of English IP law (barring patents). LucasFilm's legal team went all out trying to find a hat to hang their claims on.

so if i understand this correctly, the 28mm SM isn't protected as it is a game piece and not a piece of art.

Is the same design of the SM that is 110mm by forgeworld protected as it is a work of art and not a gaming piece?

 fullheadofhair wrote:
so if i understand this correctly, the 28mm SM isn't protected as it is a game piece and not a piece of art.

Is the same design of the SM that is 110mm by forgeworld protected as it is a work of art and not a gaming piece?

Possibly. Said copyrights have yet to be challenged in Britain (or the rest of the EU AFAIK), and therefor both are equally 'protected' or 'unprotected'.

Also, IANAL.

 fullheadofhair wrote:
so if i understand this correctly, the 28mm SM isn't protected as it is a game piece and not a piece of art.

Is the same design of the SM that is 110mm by forgeworld protected as it is a work of art and not a gaming piece?

Likely no...not a work of art either.

The problem ends up being that while it could...on its own be a work of art...because the figures exist, the design of those figures - whether they are 10mm tall Epic figures, 28mm tall 40K figures or full sized costume armor - the design is the same, and that design is a design, and not a sculpture.

Again, it is covered in the cited case quite well. Ainsworth was a prop manufacturer for the first Star Wars movies. Few years back, he figured he could make a bit of extra money by selling copies of the Storm Trooper armor made from the molds he kept. Lucas didn't like that...so they sued him. The court reasoned that because Lucas mass produced little Star Wars action figures - the big Stormtrooper armor (which are both the same design) that people could wear would have the same level of protection as those small mass produced items.

It is possible that if there were no mass market toys that went along with the movies - the individual pieces of armor might have qualified as works of artistic craftsmanship...but since the toys exist, the design becomes a design and not a sculpture.

Another point to go along with this would be the issue of 2D drawings and artwork. Normally those would be considered to be art and copyrightable, the exception is when they are used to develop a 3D design product...like the armor or the toys. This would also smack GW as most their artwork could be reasoned to be used for the design of miniatures (or marketing of those products) which moves it from "art" to a "design document".

The armor was also difficult to protect on its own as it is largely functional, being clothing. I believe that was part of the lower court's ruling, although I could be mistaken as I have not read it in a while.

 Sean_OBrien wrote:
But the reality is that toys, pieces for a game are utilitarian first and artistic second. For many years, it was common practice for games to ship with cardboard counters instead of miniatures. That is the first purpose. Miniatures were marketed later on to add some level of aesthetic appeal to those counters and markers.

For a company like GW specifically, it could be argued quite easily that were it not for the game and toy aspects...they would not exist, or at least not exist to the extent that they do now. The game is what sells the product first and foremost. It determines if a figure will be sculpted with a rifle, or a pistol and sword. Whether it will be wearing armor or carrying grenades. All of those point to the importance of the game over the aesthetic value.

Now, as the judge noted, if they look bad or didn't look like the fictional figures which they might be intended to represent...then they would loose some commercial value, but that is secondary to their primary use as pieces to play a game with.

The purpose really isn't a question of tool versus not a tool...rather the primary use and any secondary appreciation of an object for aestethetic reasons. Clearly toy soldiers have a primary use of being played with. Some people will collect them and never play with them...but that isn't their primary use.

Other companies who may do similiar work will however end up with a similiar product that has a primary use that is in fact to be looked at. Andrea Miniatures for example. The difference can be seen both in the way that they market their goods as well as to some extent the design and manufacturing process of the goods themselves (limited edition figures for example would likely be given a greater level of protection leaning towards artwork).

As a further point to this, it's worth recalling that (at least while I was playing it) Warhammer 40k had the "WYSIWYG" rule; What You See Is What You Get. A model must represent by inclusion of relevant bits the wargear that model is equipped with in the list. That is, the assembled model's ultimate composition was explicitly related to its function in the game, rather then aesthetic principles.