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 Chilling Effects Clearinghouse > Copyright > Notices > Trademark is Serious Business to Games Workshop (NoticeID 30508, http://chillingeffects.org/N/30508) Printer-friendly version

Trademark is Serious Business to Games Workshop

November 05, 2009

 

Sender Information:
Games Workshop Group PLC
Sent by:
[Private]


Nottingham, Lenton, NG7 2WS, UK

Recipient Information:
[NULL]
Librarium Online


Telemark, 3800, Norway


Sent via: postal mail
Re: Infringement of [null] Limited's Intellectual Property Rights

Games Workshop has for some time been engaged in the bussiness of designing, manufacturing and marketing: board games; war games; models; miniatures and associated products and in the course of this business has aquired and registered a large number of copyrights and other intellectual property rights.

As you may be aware copyright is a right that vests in the creator as soon as the material in question is created, in this case artwork from the Warhammer 40,000 double-headed (Aquila). Games Workshop owns the copyright in these, and it is an offence to offer for sale, (or in substantial part), or is adapted or derived from them.

It has come to our attention that artwork from the Warhammer 40,000 intellectual property has been used on the website www.librarium-online.com which we believe you administrate. Enclosed with this letter is an example of a page from the Librarium Online website showing the use of images from the Warhammer 40,000 Space Wolves codex book and packaging. As this use of Games Workshop's copyright is unauthorised, it is considered by Games Workshop to be an infringement of its intellectual property rights.

In addition, we consider the range of products sold on the site www.zazzle.com which contain the Librarium Online logo to also be an infringement of Games Workshop's intellectual property rights. This is due to the Librarium Online logo including a design. The Aquila graphical device is a registered trademark of Games Workshop. Examples of this are also included in this letter.

We take this opportunity to emphasise how seriously Games Workshop considers breaches of its intellectual property rights. We will always enforce our rights against any party infringing our intellectual property rights by means of appropriate legal proceedings. However, in the present circumstances we may be prepeared to refrain from taking such proceedings if we receive from you within fourteen days of the date of this letter your written undertakings, in a form acceptable to us, that you will:

1. immeditately cease and desist from any activity which infringes Games Workshop's intellectual property rights;
2. provide us with a full account of any profits you have made through the unlawful appropriation or use of GW's intellectual property rights;
3. deliver up to us all products incorporating in whole or substansial part copyright imagery which is the property of GW;
4. deliver up to us any and all articles, component elements and electronic files created by you or in your possession designed or adapted for making products based on intellectual property belonging to GW;
5. provide us with the names and addresses of any and all manufacturers and suppliers to you of products that infringe copyright in the imagery that belongs to GW;
6.confirm by return that you will not infringe Games Workshop's intellectual property rights at any time in the future.

In the event that we do not receive undertakings in respect of the above from you within fourteen days of the date of this letter, we shall have no option but to commense formal proceedings against you without prejudice to any other of our rights and, if necessary. forthwith and without further notice. In the meantime, all our rights are reserved.

We accordingly look forward to hearing from you. If you are in any doubt as to the content of this letter we recommend that you seek independent lega advice.

Yours faithfully

[private]

 
FAQ: Questions and Answers

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Question: What rights are protected by copyright law?

Answer: The purpose of copyright law is to encourage creative work by granting a temporary monopoly in an author's original creations. This monopoly takes the form of six rights in areas where the author retains exclusive control. These rights are:

(1) the right of reproduction (i.e., copying),
(2) the right to create derivative works,
(3) the right to distribution,
(4) the right to performance,
(5) the right to display, and
(6) the digital transmission performance right.

The law of copyright protects the first two rights in both private and public contexts, whereas an author can only restrict the last four rights in the public sphere. Claims of infringement must show that the defendant exercised one of these rights. For example, if I create unauthorized videotape copies of Star Trek II: The Wrath of Khan and distribute them to strangers on the street, then I have infringed both the copyright holder's rights of reproduction and distribution. If I merely re-enact The Wrath of Khan for my family in my home, then I have not infringed on the copyright. Names, ideas and facts are not protected by copyright.

Trademark law, in contrast, is designed to protect consumers from confusion as to the source of goods (as well as to protect the trademark owner's market). To this end, the law gives the owner of a registered trademark the right to use the mark in commerce without confusion. If someone introduces a trademark into the market that is likely to cause confusion, then the newer mark infringes on the older one. The laws of trademark infringement and dilution protect against this likelihood of confusion. Trademark protects names, images and short phrases.

Infringement protects against confusion about the origin of goods. The plaintiff in an infringement suit must show that defendant's use of the mark is likely to cause such a confusion. For instance, if I were an unscrupulous manufacturer, I might attempt to capitalize on the fame of Star Trek by creating a line of 'Spock Activewear.' If consumers could reasonably believe that my activewear was produced or endorsed by the owners of the Spock trademark, then I would be liable for infringement.

The law of trademark dilution protects against confusion concerning the character of a registered trademark. Suppose I created a semi-automatic assault rifle and marketed it as 'The Lt. Uhura 5000.' Even if consumers could not reasonably believe that the Star Trek trademark holders produced this firearm, the trademark holders could claim that my use of their mark harmed the family-oriented character of their mark. I would be liable for dilution.


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Question: What exactly are the rights a trademark owner has?

Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration.

There are two trademark rights: the right to use (or authorize use) and the right to register.

The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods.

The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement).

Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets.

Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous product.


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Question: What is copyright infringement? Are there any defenses?

Answer: Infringement occurs whenever someone who is not the copyright holder (or a licensee of the copyright holder) exercises one of the exclusive rights listed above.

The most common defense to an infringement claim is "fair use," a doctrine that allows people to use copyrighted material without permission in certain situations, such as quotations in a book review. To evaluate fair use of copyrighted material, the courts consider four factors:


  1. the purpose and character of the use
  2. the nature of the copyrighted work
  3. the amount and substantiality of copying, and
  4. the market effect.

(17 U.S.C. 107)

The most significant factor in this analysis is the fourth, effect on the market. If a copier's use supplants demand for the original work, then it will be very difficult for him or her to claim fair use. On the other hand, if the use does not compete with the original, for example because it is a parody, criticism, or news report, it is more likely to be permitted as "fair use."

Trademarks are generally subject to fair use in two situations: First, advertisers and other speakers are allowed to use a competitor's trademark when referring to that competitor's product ("nominative use"). Second, the law protects "fair comment," for instance, in parody.


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Question: What do these registration numbers mean? or Why don

Answer: Do not be led astray by the registration numbers: trademark rights in the United States arise from use of the mark in commerce, not from registering. However, both state and federal law can provide relief from trademark infringement.

If your opponent has registered its mark on the Patent & Trademark Office


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Question: What are the possible penalties for copyright infringement?

Answer: Under the Copyright Act, penalties for copyright infringement can include:

  1. an injunction against further infringement -- such as an order preventing the infringer from future copying or distribution of the copyrighted works
  2. impounding or destruction of infringing copies
  3. damages -- either actual damages and the infringer's profits, or statutory damages
  4. costs and attorney's fees

A copyright owner can only sue for infringement on a work whose copyright was registered with the Copyright Office, and can get statutory damages and attorney's fees only if the copyright registration was filed before infringement or within three months of first publication. (17 U.S.C. 411 and 412)


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Question: What does the "reservation of rights" language mean? What are they "waiving" at me?

Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.


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