GW Legal's responses and plan of action

Alright so I have received my response from Games Workshop’s legal counsel regarding their "infringement claim”.  I’ve posted the contents of our correspondence below.   Basically the gist of the discussion is that games workshop claims all chapter icons (as expected), all weapons? (I think they mean the bolter design mostly), vehicles (this specifically applies to the ground taker/ land raider I made but it was never for sale), Characters (like the stealth suit again I’ve already complied with).  The last correspondence manages to clarify that they also claim the shape of the space marine shoulder pad as their property as well, though the physical shape can’t be copyrighted it can only be patented so the legitimacy of the claim is questionable.  They also conspiquously list “the design of certain marks of armour” which clearly implies they believe my female marines are also infringing.  I don’t think they technically are but can’t really argue the point without getting sued.  They also specifically point out the trademark on the Aquila, this is the main reason the female marines are problematic as they have an Aquila on their chest.

He gave me 14 days to comply with the infringement take down notice. Which means they must be removed by September 3^rd 2012.  Following this course I will begin removing shoulder pads from the gallery on Saturday September 1^st.  Legally I can’t encourage anyone to purchase anything within the allotted time remaining before products are removed.  The time frame of item removal has nothing to do with item sales.  It has to do with the fact that I work every day of the week and will be out of town on the weekend of the 25^th so the 1^st is the first opportunity I will have to remove the items.  Removing the items does not mean I agree I am infringing on any of the products, only that I cannot afford a legal battle.

You will note towards the end of my latest response I mention the Chapter House Studio lawsuit.  The same things I’m cited for infringing are the same things Chapter House is being sued for.  Games Workshop’s legal department is no doubt aware of this fact.  They can’t rest on their laurels and just hold their breath till the lawsuit is done.  They will continue to assume they are in the right until proven wrong.  I however, unlike Chapter House don't have the legal counsel to fight Games Workshop so I will comply like a lot of websites have done.  However it’s important to note I am NOT destroying any of my works.  The 3d models will be removed from my Shapeways gallery but I will archive them.  In the event that Chapter House wins their lawsuit with Games Workshop the shoulder pads and weapon models may (I stress may) become viable again.  If a legal battle goes Chapterhouse's way I will likely seek legal advise regarding these items at that time.

If you haven’t followed the Chapter House lawsuit I encourage you to do so.  I know some people have talked about it as comical or like the sky is falling.  However I distantly hope Chapter House wins.  Not because I want to sell shoulder pads, but because Games Workshop is a legal monopoly.  They own the game rules, the game pieces, and the social events you use them at, I understand they created 40k but they are strangling the industry with their pricing scheme and poor rules writing.  Yes I know 6^th edition is the best written 40k ever, it’s still a polished turd not worthy of the background the fan base has supported for so many years.  Anyway, a win for Chapter House would limit Games Workshop’s litigations, foster competing products in the form of both additional game companies and added model companies, and possibly drive Games Workshop to limit unwarranted price increases.  I’m a huge fan of miniature gaming and good things can happen if Games Workshop loses their lawsuit.  If you’re one of those people that says Chapter House is getting what they deserve I argue that the Intellectual Property laws weren’t meant to limit industry growth and that’s exactly what Games Workshop’s monopoly does.  For every Chinese recasting company there are a thousand people like me who just want to make something for the hobby and can’t because Games Workshop claims are so broad they encompass aspects of the game beyond the identity of their products and company. By their argument the shape of their dice could be their patent which is wholly absurd.

Anyway, if anyone wants to request anything please email me and we can discuss its viability in the light of these limitations.  I will continue to make designs and produce products on Shapeways to the best of my abilities.  Regardless of the outcome of the Chapter House lawsuit I will strive to make products that support the hobby even if they don’t support games workshop.

In the interest of public disclosure here is the discussions between myself and Games Workshop's legal team.  I'd like to point out that inspite of the underlying threat of legal action the representative has been quite curteous and respectful and I personally want to say thank you to him for being civil in executing a matter that could be executed in a very uncivil manner. 

Enitial Contact on Shapeways Aug 15th 2012

Our Ref: Legal/TN/GLS/11843

Dear Sir

Your Shapeways products have been brought to my attention for infringing copyright and trademarks belonging to Games Workshop Limited.

The 'Warhammer 40,000' universe was created by Games Workshop in the 1980s. The universe and its many characters, organisations, vehicles etc. form the basis for the tabletop wargame 'Warhammer 40,000'. Games Workshop has produced and licensed a huge number of products based in the Warhammer 40,000 universe including miniatures, novels, video games, art books and sourcebooks, art prints, merchandise, digital products and more.

Having designed and developed the Warhammer 40,000 universe and the races, characters, icons, units, vehicles, weapons etc. therein, Games Workshop owns the copyright in them. It is therefore an infringement of that copyright for a third party to offer for sale, possess in the course of business, manufacture or import any product based on the Warhammer 40,000 intellectual property without Games Workshop's permission.

You have copied a significant part of the unique expression of a number of Games Workshop's products. Copying of these icons, characters, weapons, vehicles and accessories is an infringement of Games Workshop's rights as copyright holder.

Games Workshop also owns a number of registered and unregistered trademarks. One such trademark is the 'aquila' double headed eagle design. You have featured this registered trademark on several of your products without permission. This is an additional infringement of Games Workshop's rights.

Please immediately remove the infringing items from sale and contact us at tom.nanson@gwplc.com to confirm you have removed the items and that you will not infringe Games Workshop's rights in future. Please read and comply with Games Workshop's Intellectual Property Policy found at http://legal.games-workshop.com.

We reserve all rights in this matter. If you have any doubts as to the contents of this message we recommend you seek legal advice.

Yours faithfully,
Group Legal Department - Games Workshop Group PLC
For and on behalf of Games Workshop Limited
tom.nanson@gwplc.com

My responce Contact on Shapeways and email Aug 15th 2012

Dear Sir,
I thank you for your notice. I deeply apologize for any affront. While I don't always agree with GW's business practices it was not my intent to undermine your intellectual property nor "steal" anything from you. My intent was to provide products which assist your customers in realizing their army vision. And as I've spent a great deal of time painstakingly creating each piece from scratch in my 3d software I didn't see this as "Copying" anything. I'm very sorry you feel that I've infringed your intellectual properties and will be happy to remove content you feel is inappropriate. However I must ask which files you specifically feel are too closely identified with your intellectual property. I will readily admit that all of my products are made in 28mm scale to be compatible with your products. While I can identify specific icons that and items that I've been asked to make that are patterned after your designs (generally older or limited availability designs), I would like clarification of where that line ends for my own edification. For example I'd like you to clarify if it is the icon on a shoulder pad or if it is the shape of the shoulder pad itself that you feel infringes. Likewise I've made a variety of weapons, arms, legs, female equipment etc, that are significantly different than your official designs but still use similar motifs to your traditional products. As example I of this I point to my pole arms and swords lines. I'd greatly appreciate clarification on these issues.
I will begin by taking the items which I recognize as falling into your IP down, this will include the shoulder pads with specific chapter icons, the individual units I recognize from 40k including my stealth suit and drone models, as well as weaponry directly patterned after 40k items such as the heavy weapons etc. Unless I hear otherwise I will assume this does not include shoulder pads that do not bare GW iconography, weapons that are uniquely designed, and custom units.
Please understand I do greatly enjoy your game and my goal was to grow and serve the fan base in a manner which was never intended to undermine any aspect of the GW business. The 3d modeling of my products and their subsequent offering on Shapeways is a hobby to me that doesn't even reimburse me for the cost of ordering test prints of the products. Perhaps the 3d printing process is an idea that should be presented to the executives to fill market niches for underserved armies in a manner similar to the "bits" service discontinued in the 90s.
I sincerely want to find a middle ground where I can comply with your wishes and continue to develop wargaming products to support my hobby and the hobbies of others. If we can please clarify the detail of what items infringe I'd greatly appreciate this.
Sincerely,
Dynath Kajira.
PS. This message sent via shapeways private messaging will also be sent to the email address listed above.

GWlegal response by email Aug 20th 2012 

Hi Dynath

Thank you for your swift response and for agreeing to remove the infringing products.

I appreciate your enthusiasm for the hobby and Games Workshop encourages hobbyists to convert and customise their forces to increase enjoyment. Games Workshop does, however, object to commercial use of its intellectual property and/or distribution of its copyrighted material.

I’m afraid that I am not permitted to offer you any legal advice and therefore cannot give detailed guidance on your models. You would have to seek your own legal advice in relation to intellectual property for your product line.

I can inform you that Games Workshop considers any significant copying of its creations to be an infringement of its copyright. This includes, but is not limited to, the unique design of its vehicles, weapons, logos and the several marks of Space Marine armour, which includes the iconic shoulder pad design. Having created and developed the unique expression of the Warhammer 40,000 universe in its text, artwork and sculptures, Games Workshop claims the exclusive rights to produce or license products based on this intellectual property.

I can also inform you that the ‘Aquila’ double headed eagle design is a registered trademark and therefore any product that bears this symbol is an infringement. Games Workshop considers any significantly similar logo to be an infringement of its registered trademark.

I am sorry I cannot offer further assistance. As the seller, it is your responsibility to ensure your products do not infringe other parties’ intellectual property.

I look forward to your confirmation that you have removed any infringing items from your store within the next 14 days. Please also confirm that you will not infringe Games Workshop’s intellectual property in future.

Thank you for your cooperation in this matter. We reserve all rights.

Best regards

Tom

Tom Nanson

IP Assistant

Group Legal Department

Games Workshop Group PLC

tom.nanson@gwplc.com

My Response by email Aug 20th 2012

Dear Mr, Nanson

Like yourself I appreciate diligence regarding this matter.  I am a simple hobbiest and take the interests of Games Workshop in this matter with great seriousness.

I want to assure you I am already complying with the requests of Games Workshop.  I have already removed a number of products and will continue to remove additional products going forward.  Unfortunately there is no automated or batch removal function in Shapeways which means I have to manually edit each item to delete it from my account.  This process takes time and I appriciate your patience.

I’m sorry that my request for clarification was interpreted as a request for legal advice. I honestly assumed that when Games Workshop was deciding I was infringing they would have made a list of specific infringements for me to correct.  As I understand the legal process the individual with a claim of infringement is responsible for defining that claim.  My only intention was to insure I addressed all of Games Workshop’s claims of infringement. I didn’t mean to be requesting your legal expertise, only the specifics of the infringement.  Regardless I’m working to comply with your requests so I see no need to consult legal counsel at this time.  And besides I have no doubt that Games Workshop’s claims have merit or its legal councils wouldn’t pursue them.

That having been said, I will endeavor to remove items based on the “shoulder pad”, “logos” (I assume this is directed at Chapter logos) and “Aquila” design that Games Workshop claims as their intellectual property.  I’m saddened by the loss of these designs particularly because Games Workshop has not made comparable products based on the Intellectual Property they claim.  I do however understand the need for licensing and intellectual property as a whole and will comply.

I agree it is my responsibility to ensure my items don’t infringe intellectual property laws and I will do better to comply in the future. Up to and including seeking legal advice regarding my hobby if needs be. However, in spite of not having legal counsel I am aware of the current litigation between Games Workshop and Chapter House Studios.  While I will comply with your wishes now I feel that I need to inform you that if the court decides you are not the Intellectual Property holder of any or all of these designs I will continue with my distribution of any public domain items at that time, which would be my right if that is found to be the case.

I will do my best to have the offending items offline within the time allotted.  I will also attempt better judgment regarding what items and requests to fulfill in the course of my hobby so that I don’t violate games workshops Intellectual Property again.

Sincerely

Dynath Kajira