Conversion Bits vs. copyright infringement

[joedrache]

ok, so i've cooked up some pretty killer bits for use as 40k conversions. lets say its a new improved bolter.

how can i sell it without committing copyright infringement?

am i allowed to say its for use with 40k figures?

should i call it a molter rifle?

thanks

[harrybuttwhisker]

Don't recast any part of the original, build your design from scratch.

Visualy make it different enough so it is not a replica or simulacrum of artwork or products already in the public domain.

Call it a gyro jet rifle as this is essentially what a blotter is.

Show it on 40k as well as other manufacturers products stating all rights remain with the manufacturer of said product or simply as a bit.

State that it is suitable for all popular 28mm scifi games.

Advertise by showing it off on forums.

That's the minimum that springs to mind.

[weeble1000]

If you're really concerned, you'd do well to contact an IP attorney. I'd suggest doing that if you are really trying to make a business. I am not an attorney, IP or otherwise. I've had exposure to various forms of IP litigation, but I am not an expert in any sense.

As far as trademarks are concerned, in a nutshell, you don't want to cause confusion in the marketplace. It can get somewhat complicated pretty quickly though.

However, I don't think you should worry very much, depending on what you're trying to do. Whatever you do, it's likely you'll eventually get a C&D notification from GW. If you defy the C&D, will you get hit with a lawsuit? Maybe, maybe not. You should think about what kind of assets you've got. If you don't have much, there's not a lot of personal risk involved.

In order to maintain its marks, GW has to defend them, but they're unnecessarily aggressive about it. The above suggestions aren't bad, since you're much less likely to be infringing a mark if you're using the plain and ordinary meanings of words, but it doesn't take much to allege trademark infringement, and that's what you should really be concerned about. If you had time, money and chutzpah, you'd probably win an IP lawsuit against GW if it went all the way to trial, unless you were flagrantly infringing a solid mark like Warhammer 40,000. But if you don't want to get into any legal conflict with GW, the odds aren't good because the company is litigious and it is very easy to BS an allegation of infringement.

Let's take a phrase like "dark future" as an example IP issue. You could easily use the words "dark future" in a descriptive sense without violating any IP anywhere, since you'd be using the plain and ordinary meaning of the phrase. So, a product could describe future events with a bleak outlook as a "dark future." Once you start using the phrase to identify your product, you start having potential problems. So, you could be within the realm of trademark infringement if you were selling "Dark Future" the video game. Now, this is assuming that someone else, GW for example, has already been using the phrase "Dark Future" or something similar to identify its own products. In court, GW would have to demonstrate the strength of the mark "Dark Future." One way to do that is to show how you've kept others from using the mark.

A trademark is strongest when consumers identify a only single product or company with that mark. Trademarks are weaker when they have a less clear identification with a single product or entity. Also, a trademark can't take anything out of the public domain, that is, you can't trademark something already in use, which is why the plain and ordinary meaning of a word does not violate a trademark. Nobody can own the word "warhammer" in it's everyday use, not even GW. GW's "Warhammer" trademark identifies a very particular product that is distinct from the ordinary meaning of the word warhammer. However, it's not necessarily a very strong trademark compared to some others like "Microsoft" or the golden arches. Trademarks can also be weak if they identify something that is not very different from the plain and ordinary meaning of the mark, if I remember correctly. If you were selling the first hover car, for example, it would be a bad idea to call it the "Hover Car."

Trademarks can be all kinds of things, not just words (Nike swoosh, McDonald's golden arches), so you'd want to be careful about copying the distinct shape or form of something. For example, let's say that your company sold awesome computers that were all built into a certain uniquely-shaped case. If customers identified the shape of that case with your company and your excellent products, it would potentially be a defensible trademark. If a competitor was selling cheap knock-offs that used very similarly-shaped cases, you could sue because of confusion in the marketplace and because of dilution. Your company could be harmed if customers that purchased the cheap knock-off thought your company had started selling crappy products. This, I believe, would be dilution. It would be like selling a ***** called the "Mickey Mouse." Mickey Mouse is a trademark that's associated with values that are quite contrary to those associated with sex toys, so the identification of Mickey Mouse with sex toys in the consumer mindset would dilute the meaning of the mark, causing harm.

All of this is why the above suggestions aren't bad. If your product looked like a bolter and was sold as a "Space Marine Bolter" to be used with "40K models" you'd clearly be infringing several trademarks. However, it would be much less clear if your were selling a "Space Gun" for "28mm miniatures." But that doesn't mean GW wouldn't accuse you of trademark infringement.

[scadugenga]

A couple things come to mind to go with all that has been already said:

1) If it's just you, or you and a couple friends, etc. Think about registering as a LLC, if you can. That way you can shove all risk onto the llc, and not you individually.

2) Make sure if you use any models or names, that you clearly state the relevant trademarks so it is clear you are not infringing on them.

Good luck!

[Lerra]

I'll second the advise about registering as a LLC if you are planning to make a business out of it. There are also a lot of government grants/programs/etc for people who start small businesses.

[TheBitzBarn]

Dont look waste the time looking for those Grants and stuff they are a joke.

But do Incorporate an LLC. Do not Pay LegalZoom they are was too expensive. Look into doing it yourself it is not hard in some states but States that are BLUE and very Unionized it is NOT easy at all. IF you live in one of these States look into incorportaing in another state.

[weeble1000]

I know that in Ohio the state government website will walk you through the steps of setting up a business. Other government websites might have similar support. That might be a good place to look if you want to set up a business.

I agree with scadugenga. If you're planning to do this on a small scale, don't worry about it. If you're serious about starting up a business, think about consulting an attorney. Ask around. You might know somebody who knows somebody that's an attorney. It would help you get your business in order and get prepared for any potential IP issues. I don't think you should rush to the phone book and start spending 200 dollars per hour, but you might be surprised if you start asking around. Who knows, one of your friends might have an uncle that practices law and is willing to give you a free afternoon of advice.

[Lane]

Remember: Business + Sales = Taxes

You might get away with selling a few (hundred) items on Ebay and not paying sales or income tax as an individual.

An LLC that does not pay taxes may or may not get noticed.

A law suit against the LLC will attract attention if they have not paid taxes or able to produce detailed accounting records.

[Mal]

You can sell conversion bits without needing a LLC, simply call them weapon conversion bits that can be used with popular sci-fi table top miniatures games.

You don't need to give your item a descriptive title to sell it, you don't even need a formal title at all.

I've seen dozens of companies do things like this with no problems, and you won't providing you stay away from any trade marks. Don't even reference the game in the description, don't use display pictures that feature GW products...

[Porty1119]

Use plastic army men?

I dunno. It's probably a good idea to just go with your own design, with the general 'feel' of 40k weapons. If GW went after you, it would be like Apple suing Microsoft for also using keyboards on their products. A boltgun-type-thingy is fairly par for the course with sci-fi, and the FREAKING US MILITARY was funding development of a similar concept. The idea of a machine gun firing explosive rounds has been around for decades before GW was even conceived.

See: http://en.wikipedia.org/wiki/Grenade_machine_gun
http://en.wikipedia.org/wiki/Autocannon

[Lane]

If GW went after you, it would be like Apple suing Microsoft for also using keyboards on their products.

You never know what a company will sue over.

IIRC Apple did sue over the Mouse and Graphical User Interfaces.

[eldargal]

If you are really serious about it then get advice from a lawyer who specialises in IP, and don't trust peopls opinions given on the internet. It is possible to have a company that makes bits (like Chapterhouse Studios) but you have to go about it the right way.

[weeble1000]

If you are really serious about it then get advice from a lawyer who specialises in IP, and don't trust peopls opinions given on the internet. It is possible to have a company that makes bits (like Chapterhouse Studios) but you have to go about it the right way.


It's great advice to consult an attorney, but I think you've got to recognize that legal conflict with GW is a likely scenario, regardless of what you do to avoid it. You can do everything the "right" way and still get hit with a complaint. It really doesn't take much. But a BS lawsuit is still a lawsuit and you'd have a legal obligation to respond. That's what IP bullying is all about. The idea is that a company with resources, like GW, uses the threat of legal action, however unfounded, to intimidate those without the resources or willpower to deal with a lawsuit.

How do you deal with that? That's a complicated question, but I think an important thing to remember when finding an answer to that question is that the lawsuit probably doesn't have much merit. Like any bully, GW doesn't really want to get into a fight. GW picks fights against weak opponents that it assumes will back down. Just think about the ramifications of GW actually losing an IP lawsuit. It's not pretty and GW doesn't want to go there.

My point is that I don't think people need to walk on eggshells trying to avoid pissing off GW's legal department. You can bend over backwards trying to avoid infringing IP and still get hit with a complaint, so why go out of your way to avoid it? If you really want to avoid conflict with GW, just stay off the radar. Otherwise, think about the risks, take reasonable precautions to avoid infringement, and then do what you want. I mean, really, what's a jury in Maryland going to think about some British company that makes plastic toys suing a young, American start up because one tiny plastic space gun looks like another one? Not much, believe me.

[Lordgimpet]

Have you tried going to a GW site and read what information they have?
after that you will see how often thier IP is challenged, seeking legal advice is also advisable.

As I plan to do a similar thing down the track but rather making scenery and larger projects. I find you can keep under the radar by ensuring that no imagery contains anything that will breach thier TM, a list can be found on thier site. So stuff like the aquilla and the use of any of thier army/chapter/race names etc.
or anything they produce already, like say you made heresy kit for marines. and advertised it as such.

one important thing to remember.
They can and often do thier change IP and trademark details without notice so one day you can be fine
and slaped with a C&D the next.

some one can now get burnt by selling scratch-built titans on ebay now based on their IP but hasnt happened that im aware of

oh and when you do have any images or refrences a disclamer will cover you, again their website has
them defined and how to use.

[eldargal]

That is why you get the legal advice, if nothing you do is wrong under IP laws, then GW would be very unlikely to takeyou to court. The letter is just so they can prove they are actively protecting their IP.


It's great advice to consult an attorney, but I think you've got to recognize that legal conflict with GW is a likely scenario, regardless of what you do to avoid it. You can do everything the "right" way and still get hit with a complaint. It really doesn't take much. But a BS lawsuit is still a lawsuit and you'd have a legal obligation to respond. That's what IP bullying is all about. The idea is that a company with resources, like GW, uses the threat of legal action, however unfounded, to intimidate those without the resources or willpower to deal with a lawsuit.

How do you deal with that? That's a complicated question, but I think an important thing to remember when finding an answer to that question is that the lawsuit probably doesn't have much merit. Like any bully, GW doesn't really want to get into a fight. GW picks fights against weak opponents that it assumes will back down. Just think about the ramifications of GW actually losing an IP lawsuit. It's not pretty and GW doesn't want to go there.

My point is that I don't think people need to walk on eggshells trying to avoid pissing off GW's legal department. You can bend over backwards trying to avoid infringing IP and still get hit with a complaint, so why go out of your way to avoid it? If you really want to avoid conflict with GW, just stay off the radar. Otherwise, think about the risks, take reasonable precautions to avoid infringement, and then do what you want. I mean, really, what's a jury in Maryland going to think about some British company that makes plastic toys suing a young, American start up because one tiny plastic space gun looks like another one? Not much, believe me.

[weeble1000]

Anybody can make a complaint and it isn't so easy to prove that a lawsuit is frivolous. Just because you "aren't doing anything wrong under IP laws" doesn't mean you won't get sued. And you don't have to do what GW tells you to do in order to not be doing anything wrong under IP laws.

GW never expects to go to court. Because it doesn't expect to go to court, GW doesn't have any problem with filing a lawsuit on weak grounds. Gw isn't some lovable, fan-friendly company that just want's to let ya'll know what disclaimer to put up so there's no legal problems n' stuff. GW is an aggressive and litigious bully that prefers to terrorize people into giving Its IP a wide berth.

[eldargal]

And so is every other large company that relies on their IP to exist. None of this changes the fact he is better to seek professional advice and make a decision based on that, than listen to self proclaimed experts on the internet*, thats my only point.:)

*I'm not aiming this at anyone here.


Anybody can make a complaint and it isn't so easy to prove that a lawsuit is frivolous. Just because you "aren't doing anything wrong under IP laws" doesn't mean you won't get sued. And you don't have to do what GW tells you to do in order to not be doing anything wrong under IP laws.

GW never expects to go to court. Because it doesn't expect to go to court, GW doesn't have any problem with filing a lawsuit on weak grounds. Gw isn't some lovable, fan-friendly company that just want's to let ya'll know what disclaimer to put up so there's no legal problems n' stuff. GW is an aggressive and litigious bully that prefers to terrorize people into giving Its IP a wide berth.

[weeble1000]

I think we agree with each other, except that GW is like any other big company with IP to protect. I have a somewhat more dismal view of the company.

In any event, I'm not suggesting that anybody should rely on my advice alone. I do think that GW handles its IP litigation in an inappropriate and unhealthy manner and I think people should know that, both generally and when considering doing something that might bring them into conflict with the company.

I think GW has used aggressive litigation practices against hobbyists and its own customers and that this has led to an atmosphere in which people are overly concerned about GW's IP. I don't think this is good for the community and I think it shouldn't be good for GW's bottom line. I think people would to well to learn about intellectual property and take that as a step towards understanding that GW isn't able to dictate anyone else's intellectual property rights. I would be happy if the fugue of fear and doubt that surrounds GW would lift and people would start thinking about and dealing with the company as if it was indeed just another company with IP to protect.