Here is a summary of the case and where it stands. I've written it with a non-lawyer as the desired audience, since I didn't know whether you wanted this summary just for you or for the site. I've also attached a copy of the decision in the event you have trouble sleeping tonight. I’m an intellectual property lawyer by trade, so reading about stuff like this is fun for me. Adding a GW angle into it made it even more fun.
Many of you know Chapterhouse from the 40k bits and – later – the 40k tru-scale miniatures they offer. See,
http://www.chapterhousestudios.com/. You may not know that GW sued them back in 2010 for – among other things – copyright and trademark infringement (which, it occurs to me, is maybe not the best way to treat your fan base but I digress). A preliminary decision on the case came out in November of last year, and the decision was recently published.
Simply put, the case is now headed to trial, as the decision didn't grant either GW or Chapterhouse the relief they were looking for. However, there were some interesting things to come out of the decision that could have an effect on Chapterhouse and the modeling side of the hobby generally, so I thought I’d run through those.
First, the court held that GW’s Space Marine shoulder pads, generally, are protect-able under copyright law, because they are disproportionately large and therefore contain the requisite amount of originality. To mean, this suggests, that GW can probably stop other companies from molding/selling their own SM shoulder pads so long as they look enough like the GW pads. Yes – the plain should pads with no markings.
Second, the court held that shoulder pads + chapter markings + specific color schemes are also protect-able under copyright law. After having said the first thing, the court didn't really need to say the second (and one wonders if the court actually understands the hobby, as bits aren't sold pre-painted).
Third, while the court held that much of the GW iconography (space wolves, etc.) was copyrightable, it specifically singled out the Flesh Tearers icon as one that was not because it consisted solely of the combination of a tear drop and a circular saw blade which, in the court’s view, were common geometric shapes. I think the court got this one wrong, because even combinations of common shapes, if put together in original combinations, are normally copyrightable.
What this means is that GW can probably stop other companies from making iconography bits by themselves that, for example, you could melt and mold to shoulder pads, unless it is a Flesh Tearer bit. Sorry if anyone has been building a Flesh Tearer army.
Finally, the court declined to side with Chapterhouse on its claim that its use of GW trademarks (like Warhammer 40k, Space Marine, etc.) in its marketing materials was a “fair use.” To explain – a merchant has the right to refer to someone’s trademarks if it is only using them to explain to consumers that its products are compatible, or designed to be used with, the trademark owner’s genuine products. This came up because GW complained that the Chapterhouse site included product descriptions such as “Conversion Kit for Tyranid Tervigon.” In my view, this is a classic example of trademark fair use, and the court got this one wrong too. The only thing Chapterhouse could have done better was say something like “Conversion Kit for the Tyranid Tervigon model,” and a court will almost never compel someone to do this because the difference is so subtle.
Really what this court is saying is that GW might be able to have more of a monopoly on its trademarks that it should otherwise be entitled to under the law – provided the facts during trial come out the right way. If Chapterhouse has any money left at this point, I think they could appeal at least this part of the decision and win. It will be interesting to see how far GW decides to take this. If I were advising them, I would recommend that they embrace their fan community much more in the way Lucas did with the SW fanbase and instead spend their legal budget fixing finecast. But that’s just one lawyer’s opinion.
