How will this impact 40k sites?

[Nabterayl]

I'm not a trademark lawyer (and I'm certainly not offering anybody any legal advice hereby), but I am a practicing lawyer at a high-powered U.S. firm, and IP is one of those things that friends come to their lawyer friends for advice about these days. So a couple of facts might be useful if people want to discuss this further:

Trademark Infringement
As I said earlier, the key thing to know about trademark is that it hinges on consumer confusion. The whole point of trademark law is that somebody can look at a phrase or picture and immediately identify it with a particular company or person. A different company or person is not allowed to ride on the coattails of that recognition. I'm skipping over some of the details, but for present purposes, if a reasonable consumer would be confused by your use of a phrase or picture, you lose the trademark case. This is the key concept.

It doesn't matter that you don't intend to infringe on somebody's trademark. It doesn't matter that you aren't actually using their trademark at all (e.g., Sôny isn't a trademark, but it still infringes on Sony, which is). It doesn't matter that you aren't actually getting money, let alone profit, from what you're doing. It doesn't even matter if no consumers actually are confused. As long as a reasonable consumer would be, you can't do it (although of course, if you can prove that no consumers are confused, that's powerful evidence that no reasonable consumer ever will be confused).

Fair Use and Free Speech
I'll mention fair use and free speech since everybody always asks. First, fair use. Fair use does not mean non-profit use. It does not mean giving credit where credit is due. It does not mean personal use. It does not mean being a devoted fan with the best of intentions who even, dammit, arguably helps the holder of the trademark. If you ever thought fair use meant any of those, get those ideas right out of your head, take them out back, and shoot them.

In a trademark context, fair use essentially means accuracy. For instance, even though "Blood Bowl" is a trademark, you are allowed to put up an advertisement with the words "Blood Bowl" if you are selling bowls that are literally made of blood. You're just accurately describing your product. Similarly, it's not trademark infringement to discuss Blood Bowl online, such as saying, "I played a game of Blood Bowl last night ..." Again, you're just accurately describing what you did. Note that, even though fair use allows us to use the words "Blood Bowl" in discussion, it doesn't necessarily let us use it as a label. The discussions that go on in a forum are different from the URL of the forum itself.

Second, free speech. Free speech does not let you violate people's trademarks. The First Amendment (for us Americans) does not let you violate people's trademarks. It lets you discuss other people's trademarks. That is all.

Fan Sites in General
This starts to edge us into the realm of copyright law, as well as trademark - particularly something called derivative works. If you create something and write it down, record it, sculpt it, or otherwise fix it in some medium, you have (except for a few very weird exceptions which are not relevant here) copyrighted it. Copyright allows you to say who can and cannot copy what you have made. It also allows you to say who can and cannot create works based on what you have made. These are called derivative works (because they are derivative of the thing you originally made). To repeat, the copyright holder gets to decide who can and cannot make derivative works.

This is a big pitfall for fan sites, and indeed fan fiction and fan art. Drawing a totally original picture of a space marine is almost certainly a derivative work - GW gets to say who does that. Writing down the history of your ork Waaagh! is almost certainly a derivative work - GW gets to say who does that, too. Of course, there are original elements to both of those that you get the copyright in. For instance, the expression, the pose, the lighting, and the background of your space marine drawing are all yours - just not the space marine part of the drawing. You're free to draw something else with the exact same expression, pose, lighting, background, etc. Just not a space marine.

If you violate somebody's copyright, they are well within their rights to sue you to make you stop. They are also well within their rights to get any money you made as a result of your violation of their copyright. They are well within their rights to do both. They are well within their rights to do neither, which only means that they are doing neither for now, and will still be well within their rights to change their mind later.

A lot of fan sites are like the space marine drawing. You can keep the original stuff, just not the GW stuff - and if that means what you have left is full of holes and about as useful as a screen door on a submarine, too bad.

But again, what about fair use, and free speech, and fan appreciation, and ... and stuff?!

Fair use in copyright is a little broader than in trademark. It still does not mean non-profit, giving proper credit, a disclaimer saying, "No intent to challenge anybody's IP," personal use, good intentions, having the word "fan" in the name of the genre, or any of that, so if you still need to shoot a couple of those ideas, do that now. What fair use does allow in a copyright context is copying for purposes of critique, and parody.

So if you're drawing a space marine that makes fun of a space marine, that's okay. If you think about it, it kind of has to be - if you can't create a work based on another work for the purpose of making fun of it, you've essentially outlawed parody.

Similarly for critique. Imagine a drama critic reviewing a play, and saying in his review that the dialogue sucks. He is absolutely allowed to quote a few lines of dialogue in his review to make his point, even though that dialogue is copyrighted and the copyright owner hasn't given him permission to copy any part of the script. We are arguably allowed to quote GW rulebooks on the same principle when we debate the meaning of rules, even though those rules are copyrighted and GW hasn't given us permission to copy them.

Fighting Back
If anybody reading this is thinking about fighting back against cease-and-desist letters or similar action of this sort, there's two things you should know.

The first thing you should know is that you should talk to a lawyer who is expert in this stuff and who has a monetary incentive to advise you well.

The second thing you should know is that lawsuits, and the legal maneuvering leading up to lawsuits, suck. Do not get anywhere near a lawsuit without being willing, up front, to go through hell even if you win. This is not because lawyers are inherently mean people. It's not even because they're paid to be mean to you (although sometimes they are). It's because, even with the nicest, best intentioned lawyers, lawsuits inherently suck. I'm not saying that people shouldn't fight back in some cases - just that you should go into it with your eyes open.

[Lerra]

Why would GW do this? What can they possibly gain by shutting down fan sites?

I know I have bought extra stuff from GW because of fansites - someone posted an awesome conversion, so I bought the parts to do a similar conversion myself. I'm sure a lot of people have picked up a WFB/40k army after reading about the game system on a fansite. I recently bought a set of Tau models after reading some recommendations at AdvancedTauTactica. Surely GW can't think that fansites are hurting the company.

It just seems silly for GW to protect their IP at the expense of their community and ultimately their profits.

[Aldramelech]

Haven't they got anything better to do for gods sake?

[Nabterayl]

Why would GW do this? What can they possibly gain by shutting down fan sites?

I know I have bought extra stuff from GW because of fansites - someone posted an awesome conversion, so I bought the parts to do a similar conversion myself. I'm sure a lot of people have picked up a WFB/40k army after reading about the game system on a fansite. I recently bought a set of Tau models after reading some recommendations at AdvancedTauTactica. Surely GW can't think that fansites are hurting the company.

It just seems silly for GW to protect their IP at the expense of their community and ultimately their profits.

I've always been curious about this myself, but I don't know any fellow attorneys who do this kind of work, so I've never had the opportunity to ask. The best I've been able to come up with on my own is some combination of the following:

1. They're concerned about trademark abandonment. Failure to defend your trademark when it is being infringed does not mean you lose your trademark. A consistent pattern of failure to defend your trademark when it is being infringed does raise the possibility that you could be held to have abandoned it. I don't know how much of a motivating factor this is, but I'm sure even the possibility of losing one of its trademarks (even for a relatively obscure specialist game like Blood Bowl) is something GW would like to avoid - and that goes double for GW's legal team.
   
   One thing that's always bothered me about this, though - if GW (and other companies in similar positions) likes fan sites in general (which I think it's clear they do), but is worried about losing its trademark through failure to defend, why not just issue the fan site a very limited license? That way the fan site isn't infringing, and GW is no longer failing to defend their trademark (because there's nothing to defend against any more).
   
2. The risk to the company's bottom line really isn't that great. Every time somebody posts a story about this, the interwebs light up about how <insert company name here> is big, bad, and evil, doesn't care about its customer base, etc. People avow their disgust for the company, swear off its products unto the fourth generation, and so on. But how much of an impact does that actually have? This is something I would dearly love to ask in-house counsel at a place like GW.
   
   My guess is that the actual economic impact of the negative press is negligible. If that's true - if the accumulated ill will of all these enforcement actions really doesn't add up to much of anything economically - then other concerns (such as #1, above) might be the driving influence behind decisions like this.
   
3. The legal department doesn't talk to the sales department. I don't know what GW's corporate culture is like, but I know that a lot of in-house legal departments aren't as plugged in to the sales side of things as you might think. Communication barriers within companies are very real. Compounding this effect can be the quality of the lawyers in the legal department - you'd be surprised at how many big companies have mediocre lawyers in-house (that's one of the things that keeps firms like mine in business; if every big company had top-flight legal talent working for it, we wouldn't have much to sell ourselves on!).
   
   So imagine you have an i n-house lawyer who finds out that some guy on the internet is infringing his company's trademark. A really good lawyer would think about it from a business standpoint first - What's the threat to the company's bottom line? Can this situation be made to increase the company's bottom line? If not, is a legal response even warranted? If he didn't know the answers, a really good lawyer would go find the people who did.
   
   A mediocre lawyer would see this as a strictly legal problem, and reach for the cheapest legal solution - a cease and desist letter - and then pat himself on the back for protecting his company's interests. Sales might not ever even know.

I don't know how much those three possibilities work together to produce this sort of response, or even if I'm on the right track, but my suspicion is it's some combination of the above.

[Aldramelech]

Can I just say Thanks from us all for taking the time to type out these lengthy posts. They are very enlightening to us non legal types.

[Jwolf]

These are simple fixes, and a site name containing exactly the name of a copyrighted product was certain to get a Cease and Desist once legal was aware of it. That said, cease and desist letters are just part of doing business on the internet. Usually some fairly minor changes are all that are required; for instance, in this case, a change to the title of the site (notice they did not require a domain name change, just a name change, changing the donation button to a newsletter subscription button, and a nice email back saying " I won't violate your IP". 30 minutes of work and over with.

[Duke]

...
[*]The legal department doesn't talk to the sales department. I don't know what GW's corporate culture is like, but I know that a lot of in-house legal departments aren't as plugged in to the sales side of things as you might think. Communication barriers within companies are very real. Compounding this effect can be the quality of the lawyers in the legal department - you'd be surprised at how many big companies have mediocre lawyers in-house (that's one of the things that keeps firms like mine in business; if every big company had top-flight legal talent working for it, we wouldn't have much to sell ourselves on!).

So imagine you have an i n-house lawyer who finds out that some guy on the internet is infringing his company's trademark. A really good lawyer would think about it from a business standpoint first - What's the threat to the company's bottom line? Can this situation be made to increase the company's bottom line? If not, is a legal response even warranted? If he didn't know the answers, a really good lawyer would go find the people who did.

A mediocre lawyer would see this as a strictly legal problem, and reach for the cheapest legal solution - a cease and desist letter - and then pat himself on the back for protecting his company's interests. Sales might not ever even know.[/list]
I don't know how much those three possibilities work together to produce this sort of response, or even if I'm on the right track, but my suspicion is it's some combination of the above.

This is probably the biggest problem. I can tell you that generally speaking the in-house attornies do not think at all about sales. All they care about (generally) is protecting their company. If they never get sued because the paperwork is skin tight, but sales drop through the floor because the paperwork is too much then often times the legal department will often call that a 'success,'

Often times if the sales department is involved the argument is "By not getting sued we saved millions, which is equivilent to us increasing sales by XYZ percent." I know because often times I am the one who says those same words, lol.

Again, I would say that you should choose your battles wisely. I wouldn't fight this one, there isn't enough gain in it for you, and as my buddy Nab said it is a pain just to go through the process.

Duke

[Commissar Lewis]

Looks like GW is mirroring the Imperium and going the route of Obstructive Bureaucrat.

I mean, I like the IP and the models, but bull **** like this is what likely alienates a lot of fans. Honestly, if GW is gonna be acting like a bunch of ham-fisted goons, then mayhap I should purchase their products.

I can understand where their coming from and their point of view, but it still leaves a bad taste in my mouth to see them shooting down fan enthuisiasm.

[BuFFo]

Haven't they got anything better to do for gods sake?

No they don't. They are a bunch of idiots. Have been so since they went public in the 90's...

[_Si_]

A lot of people seem to have a very naive impression of GW. They're not a big evil faction, but legal will have been tasked with protecting the company's interests and that's what they're doing.

In terms of legal documentation think of the C&D as more of a "hello, we know you exist and we'd rather you didn't trade off our name, okey dokey?". Just get back in touch, work with them and play nice.

Whilst IP infringement is always a bit of a grey area and is usually down to the individual judge to make a hah judgement call, the only possible reason you'd ever let this situation get that far is if the site is an ongoing business interest.

It's just not worth the hassle when you're in the wrong. Play nice and keep the site going. You never know, GW might even buy you a new domain if you come at it from the right angle..