A press release from Chapterhouse Studios' Law Firm tells the tale pretty well. Games Workshop got spanked for its overreach. Chapterhouse has done the after market parts business a huge favor.
Winston & Strawn Defeats Hundreds of Trademark and Copyright Infringement Claims on Behalf of Pro Bono Client
Cutting-Edge Decision Protects Industries from Litigation Blocking Add-On Products
CHICAGO, IL – In a classic David-versus-Goliath battle, Winston & Strawn LLP represented Chapterhouse Studios LLC on a pro bono basis in a cutting-edge federal trademark and copyright dispute in the Northern District of Illinois (Games Workshop Limited v. Chapterhouse Studios LLC 1:10-cv-8103). The verdict of this jury trial, held in June 2013 before Judge Matthew Kennelly, confirms that copyright and trademark law should not be used to block add-on products. Winston & Strawn has litigated the case since 2010, and co-counsel law firm Marshall Gerstein joined the matter in 2012.
“This was a classic case of trademark and copyright bullying by a much bigger Plaintiff,” said Jennifer Golinveaux, partner in Winston & Strawn’s San Francisco office. “I am proud of the investment made by the firm, and the many attorneys who devoted themselves to making sure the intellectual property laws were not misused to squash a much smaller player.”
Games Workshop manufactures Warhammer 40,000, a tabletop battle game that works with armies of miniature figures and vehicles, while Chapterhouse sells customized add-on parts for the figures and vehicles used in the game. The United Kingdom-based Games Workshop, a company with $200 million per year in revenues, alleged more than 200 claims of copyright and trademark infringement against Chapterhouse, a small business run out of an individual’s garage in Texas. Games Workshop argued that it was seeking a complete shutdown of Chapterhouse’s entire business and although Games Workshop initially sought over $400,000 in damages, by the end of the two-week jury trial, the plaintiff dropped its damages demand to only $25,000.
The jury deliberated for more than two days and found that Chapterhouse could continue to make and sell over a hundred products without fear of copyright infringement. The jury also confirmed that Chapterhouse could continue to use most of Games Workshop’s asserted trademarks when selling compatible parts, including all nine of Games Workshop’s registered trademarks. Together with the summary judgment wins, the jury’s verdict confirmed Chapterhouse can continue to make and sell 111 products that Games Workshop hoped to block using copyright laws, and can continue to use 104 words and phrases that Games Workshop said were trademarked.
Imron Aly, lead trial attorney and partner in Winston & Strawn’s Chicago office added, “It was a pleasure to represent a small entrepreneur like Nicholas Villacci of Chapterhouse, who has a passion for his work and wanted to see his business survive.”
Cutting-Edge Decision Protects Industries from Litigation Blocking Add-On Products
CHICAGO, IL – In a classic David-versus-Goliath battle, Winston & Strawn LLP represented Chapterhouse Studios LLC on a pro bono basis in a cutting-edge federal trademark and copyright dispute in the Northern District of Illinois (Games Workshop Limited v. Chapterhouse Studios LLC 1:10-cv-8103). The verdict of this jury trial, held in June 2013 before Judge Matthew Kennelly, confirms that copyright and trademark law should not be used to block add-on products. Winston & Strawn has litigated the case since 2010, and co-counsel law firm Marshall Gerstein joined the matter in 2012.
“This was a classic case of trademark and copyright bullying by a much bigger Plaintiff,” said Jennifer Golinveaux, partner in Winston & Strawn’s San Francisco office. “I am proud of the investment made by the firm, and the many attorneys who devoted themselves to making sure the intellectual property laws were not misused to squash a much smaller player.”
Games Workshop manufactures Warhammer 40,000, a tabletop battle game that works with armies of miniature figures and vehicles, while Chapterhouse sells customized add-on parts for the figures and vehicles used in the game. The United Kingdom-based Games Workshop, a company with $200 million per year in revenues, alleged more than 200 claims of copyright and trademark infringement against Chapterhouse, a small business run out of an individual’s garage in Texas. Games Workshop argued that it was seeking a complete shutdown of Chapterhouse’s entire business and although Games Workshop initially sought over $400,000 in damages, by the end of the two-week jury trial, the plaintiff dropped its damages demand to only $25,000.
The jury deliberated for more than two days and found that Chapterhouse could continue to make and sell over a hundred products without fear of copyright infringement. The jury also confirmed that Chapterhouse could continue to use most of Games Workshop’s asserted trademarks when selling compatible parts, including all nine of Games Workshop’s registered trademarks. Together with the summary judgment wins, the jury’s verdict confirmed Chapterhouse can continue to make and sell 111 products that Games Workshop hoped to block using copyright laws, and can continue to use 104 words and phrases that Games Workshop said were trademarked.
Imron Aly, lead trial attorney and partner in Winston & Strawn’s Chicago office added, “It was a pleasure to represent a small entrepreneur like Nicholas Villacci of Chapterhouse, who has a passion for his work and wanted to see his business survive.”
I for one am so happy that Chapterhouse did well in this case. Games Workshop is a bully and deserved to get slapped.
Not that I expect them to change their behavior. At least now it is pretty clear that the bitz business is legal and some guidelines are there to help.
Loken
16 comments:
I'm sorry but that's absolute nonsense, GW have every right to protect their IP and that's all they're doing, Chapterhouse are clearly making money by selling items related to and directly inspired by GW products and design without paying for a license to do so.
Whether they are legally entitled to do that or not is up for the courts to decide (not that they get it right on every occasion, or even most in some countries) but they have most definitely not been "bullied" by GW whom are acting in the manor every other company of their size would do (including Chapterhouse if they were anywhere near the size of GW) they like any other large company need to protect their products not just for their own benefit but for the consumers who buy their products as well, its quite frankly ridiculous to suggest otherwise.
As a counterpoint, while GW has every right to protect their IP, their failure to understand fair use, failure to trademark appropriately and other situations has resulted in this. They did overstep their boundaries by leaps and bounds, and who knows where else they have done this in the past.
I understand that they do have to protect their IP lest they lose control over it, but going after things that have the words 'Space' and 'Marine' next to each other is just as brazen. Its like if they suddenly decided to go after this blog because 'Apocalypse' and '40k' were next to each other because its too close to the title of their books. Or after Bell of Lost Souls because its in their fluff, written out as early as a White Dwarf and as recent as the 6th rulebook.
This case was needed, not just for the 3rd party manufacturers to continue making bitz and customizing out our models, but to protect essentially the entire internet fanbase.
I'm sorry to be the one to tell you this but this case was decided many years ago with auto industry. There is a legal precedent that allows people to make compatible parts without resorting to naming them ridiculous things. I can go to any parts store in the world and buy parts for a BMW that are not made by BMW.
This is a simple case of a Large business trying to corner the market on bitz and accessories, while using it larger bank fund to drive out competitors.
Unfortunately GW created its own monster, buy intentionally doing away with bitz sales and cutting off bitz services. They have creating a marketd for a bitz manufacturer.
It's a monster GW created intentionally on their own when they shut down their bits sales almost a decade ago. There was a demand, and GW failed to recognize it. Kudos to Chapterhouse.
That's a nice happy press release, but what about the 1/3rd of the case that GW won?
My impression is that CH won big on the use of GW trademarks for their website, but lost on some specific model names and/or designs. Any info on that?
A court of law disagrees with you Ben. GW has made a habit of overreaching its copyrights and trademaks.
GW isn't a bully. It's a company. It's a company that employs thousands of people all over the world. It pays it bills and it's tax so contributes to the global economy. They're not the bad guys here.
If someone else was using their hardwork and established brand to make money off the back of, then they're completely entitled to protect their business and all the people that rely on that business.
You calling them bullies just shows how ignorant you are to the bigger picture. Sorry had to said. Sick of the GW bashing from the uneducated.
It's a company that overstepped their boundaries, repeatedly. And CHS didn't get away scot-free, as shown by the fact they still had a number of situations held against them. This legally sets up both protection, and what Games Workshop can go after. Full model replacements are a blatant no, as shown by the example presented in the Doomseer. This spares CHS, but not necessarily Scibor Miniatures who are much more borderline in my opinion than Kromlech or CHS.
As for your comment on contributing to the global economy, by you buying their kit, they already have your money. Adding on pieces to your kit when they no longer have/make anymore, and turn around to attack those parties in question, fits the bill of being a bully.
Games Workshop no longer fully provides add-on bitz like they used to. There are still a few there, but not nearly enough, which is how companies like Kromlech and CHS exist. Full model replacements like Scibor are the big issue, but other laws prevent Games Workshop from taking action against them currently.
+1 to Garfy there, if there was a like button I'd have clicked it ;)
Not surprised Ben since neither of you understand the law nor the principles involved nor how Games Workshop has overreached repeatedly. You come off as corporate shills by spouting how CHS shouldn't be allowed to make money off of GW. As was said above, this case was decided in the auto industry years ago. NOTHING prevents one company from making accessories for another companies products. Like cell phones. CHS just was sloppy. Kromlech, MAS, Scibor and Puppets War all are smart about how they do it and now GW can't go after them. GW screwed itself by being greedy. Like trying to claim a copyright on "Space Marine" which made them look like liars.
I really don't see how this is a huge win. It was really many small claims and some won some lost. It isn't a hockey game where you win if you score the most. The guy charged with 15 crimes and only convicted of 5 was still breaking the law.
I also think this 'opening up the market' is a bit overzealous since most of those other companies are in eastern europe and probably getting away with more solely for that reason alone.
I find it so funny how many people play this game and hate on GW. Does it not get tiresome? It's like touching a cactus over and over and bitching that it hurts while having a fetish and getting enjoyment out of it anyway.
I have to say I don't get the legal jargon, but if I buy a GW kit and then modify it with my own green stuff, there is no issue? But if I buy a few bits from a company other than GW to modify a kit I purchased, it's wrong? Is the issue in the title of the bits, eg: Space Marine MK7 Power Armour Helmet (GW) or Helmet for Futuristic Space Marine (A.N.Other Company)?
We play the game and hate on GW because we fell in love with the game when GW was a completely different company. A company that basically formed its titles by stealing from the IP of various others. Then shareholders came in and swiftly ate away everything that was good about GW. The spirit of fans being creative(create your own vehicles) being one. EVERYTHING became about profits and @#$% the customer base. This is why most of the original creative talent left, they were disgusted by what GW had become.So yes, we love much of what came from the creative talent that built GW. And yes, we also hate the toupee-helmeted money-obsessed corporate drones that do their best to ruin GW and milk it dry, along with every company they can sue and intimidate.
Bruce I have a hard time believing that you can think the old models were better than the new ones. Aside from personal preference on some of the new scults, they are a multitude better than the old ones from the 90s. I'm glad those basement sculptors left; I doubt it had anything to do with them thinking their employer was 'disgusting'. In the last 10 years GW has expanded their model ranges immensely, improved quality and sculpts and grown the hobby. You may pay more for a premium product but all your other whining is completely unrealistic. Check out the other plethora of blogs out there - there is definately no lack in creativity. Take a deep breath and enjoy the game for what it is, or play a different one. There aren't many of us that are one system only yet everyone still hovers around 40k.
@Loken
1: I can't speak for Garfy as I don't know him but as for me, you're quite right I have no training in the law but from what I've seen neither have you so we're both coming from a standpoint of ignorance.
To be fair though I never said I did and also my comment wasn't about the legalities of the situation, as they change from country to country and in some places from state to state, more the morality of it.
2: "corporate shills", really?
You may as well have called us fanboys or noobs or some other fatuous nonsense as you have no idea what my overarching views are simply from a few small comments.
3: GW are far more comparable in my eyes to the creative industries of Film, TV and Games where you need a license to use their IP such as the one GW holds for LOTR/ The Hobbit, rather than the automotive/ mobile phone industry which they bear absolutely no resemblance to.
4: Calling them "greedy" and saying that something made them "look like liars" is opinion not fact and whether GW's legal team were right to pursue one thing or another is up for the courts to decide and not people like us who don't have enough info on the subject from the people that actually matter in these instances; GW and the defendants and not just hearsay from those around it (such as lower down GW employees who don't have all the info) or opinions of others.
Quite frankly I just want a bit more understanding as to why these things happen and not just angry mob mentality where the little guys good and the big bad company is out to get them which is not always the case.
hardwork..."space" "marine" is not a brand its common a phrase and should not be the ownership of a company.
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