IP infringement question - reasonable claim or not?

[Apollyon]

I came across an odd IP claim and thought I’d appeal to the Dopers to help me understand whether it’s a reasonable claim (and I’m missing something in understanding it) or something less reasonable (and likely unenforceable).

(Caveats: I’m not involved in any legal wranglings on this, it is merely curiosity).

The claim in question is one made by UK company Games Workshop (manufacturers of tabletop war-gaming figures and rules). They have a page of legal cans and can’ts on their website, and for the most part it generally makes sense: don’t copy our stuff, don’t look like you’re an official publication if you’re not, if you use our trademarked terms acknowledge their source, etc.

And then there is this oddity:

@GW Legal Terms

Conversions

Conversions are a major aspect of the hobby, although in intellectual property terms, they also constitute a major infringement. However, we are certainly not about to stop people making cool conversions of our products, although, there are certain things to keep in mind:

Please do not combine our intellectual properties with IP owned by any third parties.

The section after deals with one-off conversions vs. casting, so, the claim above isn’t about casting / duplicating their products, but rather – it seems to me – a claim that any conversion is an infringement, but one that they’re not going to pursue.

IANAL, but I thought I had a fair grip on the basics of copyright and trademarks, and this claim surprises me.

I rather thought that if I buy a GW model then I own that particular instance of the model – I certainly don’t have rights to copy it – but I can bend, fold, spindle, or mutilate that particular model to my heart’s content. And if I want to decapitate my little soldier and replace its head with one from another model I own then that’s also just fine.

(The new hybrid model is of course a derivative work and I have no duplication rights to that either).

GW would of course be entirely within their rights to prohibit me from using my pig-headed soldiers in one of their official tournaments, but I’m not understanding how me simply making the figure for my own use and amusement could be a “major infringement”.

What do people think? Is my understanding lacking here, or is this claim a GW legal department boondoggle?

[Derleth]

@Apollyon

don’t copy our stuff

Reasonable.

don’t look like you’re an official publication if you’re not

Likely unreasonable, unless they just mean that I can’t make my commercial works look like theirs by ignoring their trademarks and copyrights.

if you use our trademarked terms acknowledge their source

Unreasonable. I can mention their trademarked terms all day and all night unless I’m using them to defraud the public and I don’t ever need to use ™ or ® or anything of the sort. Those marks are for them to use, not anyone else.

And then there is this oddity:

@GW Legal Terms

Conversions

Conversions are a major aspect of the hobby, although in intellectual property terms, they also constitute a major infringement. However, we are certainly not about to stop people making cool conversions of our products, although, there are certain things to keep in mind:

Please do not combine our intellectual properties with IP owned by any third parties.

The section after deals with one-off conversions vs. casting, so, the claim above isn’t about casting / duplicating their products, but rather – it seems to me – a claim that any conversion is an infringement, but one that they’re not going to pursue.

This is only reasonable if this means they’re allowing commercial use of their copyrighted or trademarked properties in a given context under certain conditions.

IANAL, but I thought I had a fair grip on the basics of copyright and trademarks, and this claim surprises me.

I rather thought that if I buy a GW model then I own that particular instance of the model – I certainly don’t have rights to copy it – but I can bend, fold, spindle, or mutilate that particular model to my heart’s content. And if I want to decapitate my little soldier and replace its head with one from another model I own then that’s also just fine.

This concept is challenged by certain laws that don’t apply here, so this seems like a reasonable statement.

(The new hybrid model is of course a derivative work and I have no duplication rights to that either).

Right.

GW would of course be entirely within their rights to prohibit me from using my pig-headed soldiers in one of their official tournaments, but I’m not understanding how me simply making the figure for my own use and amusement could be a “major infringement”.

What do people think? Is my understanding lacking here, or is this claim a GW legal department boondoggle?

It sounds like a boondoggle if they think they can restrict what you do in private and among friends.

[GHO57]

I think they’re more worried about being an accomplice. They’re cool with what you do to their stuff, they just don’t want seem like they’re giving you permission to mess with other people’s stuff.

[Candyman74]

@Apollyon

I rather thought that if I buy a GW model then I own that particular instance of the model – I certainly don’t have rights to copy it – but I can bend, fold, spindle, or mutilate that particular model to my heart’s content. And if I want to decapitate my little soldier and replace its head with one from another model I own then that’s also just fine.

It’s not talking about mutiliating objects you’ve bought. It’s talking about the rules and text in their books and distribution thereof.

You can eat the model for all they care; but you have to pay them their dues if you create a web page of “Apollyon’s Custom Warhammer Rules”.

The model isn’t their Intellectual Property. It’s your object. Do what you want with it! The text, art, etc. in the rules, the product packaging, etc. is their IP.

[Apollyon]

@Derleth

Likely unreasonable, unless they just mean that I can’t make my commercial works look like theirs by ignoring their trademarks and copyrights.

Or it could be me mangling their meaning – the context of this is their claim that I shouldn’t call a web-site the “Space Hulk Homepage” (for example, where Space Hulk is one of their games and TMs), but that it’s OK to call it something like “Cleanse & Burn – Apollyon’s site dedicated to GW’s Space Hulk”.

Unreasonable. I can mention their trademarked terms all day and all night unless I’m using them to defraud the public and I don’t ever need to use ™ or ® or anything of the sort. Those marks are for them to use, not anyone else.

Interesting. Again could be me mangling stuff; context is the disclaimer block seen at the foot of many GW fan sites, something like “Aardvarks in Space, PlasmaMegaWhompa, and Elves from Mars are Trademarks of GW and no claim to them is being made”.

I’m assuming from your response that such a caveat may not be legally required.

[Apollyon]

@Candyman74

It’s not talking about mutiliating objects you’ve bought. It’s talking about the rules and text in their books and distribution thereof.

Most of their legal terms do deal with their text and images, etc, but the “conversion” claim is (IMO) about physical object conversions, and within the modeling hobby (GW or not) conversions involve chopping and changing models, swapping heads and arms on figures, kit-bashing tanks, scratch-building additions and the like.

They seem to be claiming that if I take a model, which as you say is my object, but which is also a *product *of their IP, and hybridize it with a model from a different manufacturer then this act, the act of conversion, constitutes some sort of IP infringement. And that’s what I don’t get – and suspect is an unreasonable claim.

[BigT]

@Apollyon

Interesting. Again could be me mangling stuff; context is the disclaimer block seen at the foot of many GW fan sites, something like “Aardvarks in Space, PlasmaMegaWhompa, and Elves from Mars are Trademarks of GW and no claim to them is being made”.

I’m assuming from your response that such a caveat may not be legally required.

I’m not a trademark expert, but I do know about this part. That disclaimer is mostly used as insurance. An explicit statement like that makes it hard for them to claim you were infringing on their right. Not impossible, as disclaimers aren’t magic bullets, but harder.

As for your main question (which I’m not going to bother quoting since it’s in the OP), I suspect it’s probably the same thing that doesn’t allow you to say, take French’s mustard, mix something with it, and then sell it as if it were your own product. There was a thread about this recently. (someone else will have to link it).

Based on that thread, I would suspect you can do what you want with the object itself. It’s the selling of it that would be an infringement.

[Candyman74]

@Apollyon

@Candyman74

It’s not talking about mutiliating objects you’ve bought. It’s talking about the rules and text in their books and distribution thereof.

Most of their legal terms do deal with their text and images, etc, but the “conversion” claim is (IMO) about physical object conversions, and within the modeling hobby (GW or not) conversions involve chopping and changing models, swapping heads and arms on figures, kit-bashing tanks, scratch-building additions and the like.

They seem to be claiming that if I take a model, which as you say is my object, but which is also a *product *of their IP, and hybridize it with a model from a different manufacturer then this act, the act of conversion, constitutes some sort of IP infringement. And that’s what I don’t get – and suspect is an unreasonable claim.

It sounds like a very silly claim. It’s far more likely that they’re talking about their text/art IP.

Occam’s Razor and all that.

Of course, you could be right; but in that case I wouldn’t worry about it. They aren’t going to be coming round your house to inspect your models.

[Derleth]

@Apollyon

@Derleth

Likely unreasonable, unless they just mean that I can’t make my commercial works look like theirs by ignoring their trademarks and copyrights.

Or it could be me mangling their meaning – the context of this is their claim that I shouldn’t call a web-site the “Space Hulk Homepage” (for example, where Space Hulk is one of their games and TMs), but that it’s OK to call it something like “Cleanse & Burn – Apollyon’s site dedicated to GW’s Space Hulk”.

They can go after you for anything, but going after you for something like that seems like a waste of money to get their lawyers to send out paperwork relevant to a case they’d likely lose.

Unreasonable. I can mention their trademarked terms all day and all night unless I’m using them to defraud the public and I don’t ever need to use ™ or ® or anything of the sort. Those marks are for them to use, not anyone else.

Interesting. Again could be me mangling stuff; context is the disclaimer block seen at the foot of many GW fan sites, something like “Aardvarks in Space, PlasmaMegaWhompa, and Elves from Mars are Trademarks of GW and no claim to them is being made”.

I’m assuming from your response that such a caveat may not be legally required.

I’ve never seen a fannish caveat that would do the fans the slightest bit of good. Fanfic isn’t made any less illegal by a disclaimer*, parody is legal already and doesn’t need any help, and fan sites and review sites are either explicitly legal or so far in the territory of ‘nobody bothers to sue’ that they’re effectively safe even without disclaimers.

*(Fanfic is illegal if the original work is under copyright. Nothing anyone can say will change that, unless the owner of the work that forms the basis of the fanfic says they’ll allow it. Paramount has done this relative to Star Trek, Rowling has done this relative to Harry Potter, and there may be other examples, but don’t come running to me when the cease-and-desist letters come in over your latest piece of slash.)

[dracoi]

I think it’s a clause more designed to protect GW from a third party.

At a convention, I met a person who had done a rather fascinating conversion of parts to create a set of ALIENS-style figures. Many of the parts were recognizable GW products. If someone related to the ALIENS franchise wanted to start suing, GW’s rule prohibiting crossover modifications would give them at least superficial protection, by showing that they clearly did not encourage or endorse the individual who made it.

This becomes even more relevant because of the large market for figurines that have already been assembled and painted. Some people make very good money out of that.

[Apollyon]

@dracoi

I think it’s a clause more designed to protect GW from a third party.

That’s an interesting idea.

Thank you for the replies folks.

I’m pretty sure that quite a few of GW’s claims are things that they’d never (hmmm… better make that:“very probably not”) be able to successfully litigate, the OP claim was however just so outlandish I was looking for a sanity check.