Precinct Omega
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A History of GW's Legal Journey [Script]
🕑 Added 2022-09-01 11:01:03 +0000 UTCGAMES WORKSHOP’S COMPLICATED HISTORY WITH THE LAW
Games Workshop is an endless source of interest in our industry, for a variety of reasons. But a price of being tabletop wargaming’s largest gorilla is that legal developments that impinge upon the industry are likely to hit them first. And no one can say they haven’t been proactive over the years when it comes to establishing precedent and caselaw when it comes to the fine art of playing toy soldiers.
As there have been some recent rumblings of new legal actions with the potential for major significance, I thought it was worth taking a look at the history of the major legal cases involving Games Workshop, even though - and I’m obliged to emphasize this - I Am Not A Lawyer.
But before we get to GW, I need to lay a bit of groundwork and talk about…
Tolkein Enterprises vs TSR
It’s worth kicking off with a bit of myth busting: the estate of JRR Tolkein that owns the creative rights to the Hobbit, the Lord of the Rings and all of the associated literary works of the late father of modern fantasy literature has never sued Dungeons & Dragons, contrary to popular belief.
Tolkein Enterprises is an entirely different business owned by Saul Zaentz, a US media producer, who bought the film, stage and merchandising rights from United Artists in 1976 who had bought them from the Tolkein estate in 1968. Even Tolkein Enterprises never actually sued TSR, but they did write them a threatening letter over the planned release of a board game based on the Battle of Five Armies, and demanding that certain terms - including balrog, ent, elf, dwarf, dragon and others - be removed from the D&D roleplay game rulebook. TSR elected to partially comply and removed the terms balrog, ent, warg and hobbit and also ditched the board game.
To be fair to TSR, the actual copyright of the Lord of the Rings and the Hobbit had lapsed at the time and the Tolkein estate was taking steps to extend the copyright - steps that were eventually successful. This is likely why it was Zaentz rather than the estate that threatened action, because Zaentz’s ownership of the rights was still undisputed. But, also, the games pertained to merchandising rights that were specifically in Zaentz’s purview.
As a point of detail, Zaentz owns those rights to this day.
Why is this all relevant? Well, it speaks to the next topic.
Blizzard and GW
There is also a persistent rumour that GW sued Blizzard over their WarCraft property in the 1990s. The short version is that there is absolutely no evidence that this ever happened.
The most coherent version I can find is from Patrick Wyatt, WarCraft’s original producer, who explained that although some members of the dev team had wanted to make a Warhammer game and were keen to press Blizzard to secure the licence, Blizzard had already had bad experiences with licensed properties and wanted to control their own intellectual property. So they decided to proceed without seeking a licence from Games Workshop - a decision that ultimately led to World of Warcraft making Blizzard the company it is today.
I think we can fairly conclude that certain aesthetic decisions in the WarCraft setting were inspired by art being generated at Games Workshop at the time, particularly the Brian Nelson orc designs that marked a significant step away from the early, more Tolkein-inspired designs. Bu that brings me to the first of two learning points to take away from this story.
The first is to address the allegation that GW ripped off Tolkein. And this is true only so far as any artist inspired by the works of an earlier artist is “ripping off” the earlier artist. The TSR situation - even though it never went to court - established pretty firmly that elves, dwarfs and the fantastical imagery of Tolkein was fair game for other creators to exploit and, for all that people might complain about it, to call it “ripping off” is unfairly pejorative. The classic fantasy races work because they evoke cultural archetypes in a way that people - especially in the Western European cultural context - can tap into on an instinctive level so it should be no surprise to see them evoked again and again across hundreds if not thousands of different narrative settings.
The second is to call out the fact that the number of times people see WarCraft and say “wow, that ripped off Warhammer” is probably at least equal to the number of times people see Warhammer and think it ripped off WarCraft. And this isn’t a coincidence. First of all, we are naturally inclined to favour as “original” whatever source we first encounter in our own experience. People as familiar with his academic specialty as Tolkein was at the time probably would have made similar accusations that his “Arda” setting just ripped off the poetic Edda and Anglo-Saxon mythology.
But also, inspiration is a two-way street when you have two intellectual properties dominating their own distinct but related fields. The idea that artists and designers at Games Workshop weren’t inspired by the evolution of WarCraft and, later, World of Warcraft is as silly as the idea that Blizzard’s designers weren’t fans of Warhammer. And, in this particular case, it created a virtuous circle of creative feedback and drove both properties in unique directions.
I am hoping, though, that the news that GW is exploring a return to Cathay and Nippon in their forthcoming Old World game, won’t also presage a new race of panda people.
So as a final note to take away from this: GW never sued Blizzard or vice versa. And, as an additional note, WarCraft was never going to be a Warhammer game except in the fevered imaginations of a handful of relatively junior devs. And that was probably a good thing.
So let’s get to case where GW did actually sue someone.
Games Workshop vs Beal (2006-2008)
You may not have heard of this one, but the case of Games Workshop vs Beal would draw some important first lines when it came to Games Workshop’s protection of their intellectual property - in terms of the legal tactics they would follow, the attitude they would take to legal actions and, of course, their official position when it came to ripping them off.
In about 2005 GW became aware that Brian Beal, a US citizen, was re-casting their miniatures and selling the re-casts on eBay. Now, I know very little about Mr Beal and have no plans to dox him here. However, he doesn’t appear to have denied the allegation that he was re-casting GW’s designs and selling them.
The company issued Beal a cease and desist letter before demanding a settlement of $10k per re-casting, which Beal refused and it went to court. GW then sued for $30k per re-cast (with two specific miniatures noted as having been re-cast and sold on eBay). Beal argued he made very little from the operation, and although his records were scanty so he couldn’t prove it, he insisted that he had only made $60 profit after costs, and argued that compensation should be reduced to no more than $1000 per casting. The court settled on a figure of $4000, saying that the two parties’ proposals were both out of proportion to the alleged breaches.
GW also claimed for attorney’s fees. Amusingly, the court observed that most companies would be complaining vociferously about the costs they had suffered in bringing such a suit, whereas GW, according to the judge, seemed “quite proud” of the almost $200k that they spent on prosecuting the case - and also noted that there was no breakdown to explain why the costs of local counsel had come to as high as $62k, which the court described as “extensive”.
Although in the bigger picture, this case doesn’t tell us much more than “recasting is a bad idea and GW will sue”, it does set a bit of a precedent for future suits in which GW would demonstrate that it wasn’t just litigious or even aggressively litigious but that its leadership seemed to obtain some degree of malign satisfaction from exerting their financial muscle to bully litigants.
I’m not saying that Beal was in the right. He clearly wasn’t, but GW was clearly out to make an example of Beal in order to deter what was sure to have been a much greater population of less flagrant re-casters that were out there in 2006. But the Beal case was also the first sign that GW was genuinely not merely prepared to throw serious numbers in the cause of defending their intellectual property, but actually anxious to do so.
In the end, just so you know, Brian Beal, who sold two re-cast GW minis on eBay, ended up with a bill for just under $55k in damages, plus the costs of his own defence.
And GW was archly informed by the case judge that although their actions were legal, he thought they were also disproportionate.
Games Workshop vs Chapterhouse Studios (2010-2012)
Now, about the time they were wrapping up affairs with Beal, GW became aware of an enterprise that has now passed into miniatures wargaming legend: Chapterhouse Studios.
This is probably the biggest case in terms of defining GW’s relationship with the rest of the market it so overwhelmingly dominates.
Chapterhouse Studios was a small business in the US run by Nick Villacci that quickly gained attention for its range of after-market add-ons and original miniatures for, mostly, Warhammer 40,000. Now, Chapterhouse was not unique in this field, although it was an early entrant in the market alongside businesses like Puppetswar, Scibor and Kromlech. But Chapterhouse was unusual among its competitors in that it made absolutely no bones about the fact that it was filling gaps in the products range for Warhammer 40,000 that Games Workshop wasn’t. If you wanted embossed chapter emblems for your space marine army and GW didn’t make the ones you wanted, the odds were that Chapterhouse did. And they weren’t shy about advertising their products as explicitly intended for use on GW minis or for Warhammer 40,000.
Way back when, I was actually tangentially involved in this enterprise as I was commissioned to do some concept art for a range of Grey Knights Land Raider doors for Chapterhouse, which I understand were sculpted but I don’t believe ever went into production.
Anyway, GW issued CHS with a C&D in 2008 and Villacci responded by adding a disclaimer to the website and slapping the “registered” symbol onto every other word. He was the embodiment of malicious compliance and my impression at the time and, still, today was that Nick was basically daring GW to sue him. And sue him they did.
The suit went on for a long time, with senior members of GW’s staff travelling to the US to testify, academics being engaged to give expert testimony on historical armour designs, heraldic symbols and geometry. The whole case record is a great insight into the history and inner workings of Games Workshop as recorded by someone to whom toy soldiers and miniatures wargaming is total gibberish.
Inevitably, in the end, both sides claimed victory, but Chapterhouse Studios was the one that ended up going out of business with the case proving that there is, in fact, such a thing as bad publicity.
The case proved three important things that remain a feature of our hobby today:
- You can legally make original miniatures based on characters in someone else’s gaming universe as long as the designs themselves are original.
- You can make new parts that are compatible with someone else’s miniatures as long as they are original designs.
- GW will throw whatever it takes at a suit to suck the financial life from a competing business in order to make an example pour encourager les autres.
The outcomes of the CHS case, today, are what form the basis for the current aftermarket represented by the still-extant businesses that I mentioned before as well as many others. As with the Tolkein case and the WarCraft thing, the fact remains that what the common consumer may see as an “obvious rip off” isn’t necessarily any such thing in the law.
All of this is going to be very relevant to another case, later in this episode. But before we get there, we have to talk about Spots the Space Marine.
Games Workshop vs Hogarth
The bare bones of the story are pretty straightforward. In 2012, Maggie Hogarth, writing as M.C.A. Hogarth, self-published a sci-fi novel called Spots the Space Marine about a young mother who finds herself drawn into an interplanetary war. Like many independent authors, she made use of Amazon’s digital marketplace to market and sell her book in both electronic and paperback formats.
In January 2013, Games Workshop gave Amazon a take-down request claiming that the title of the novel breached their trademark on the term “space marine”. When Games Workshop refused to engage in a dialogue with Hogarth, she turned to the sci-fi community for help and there was a fair tsunami of scorn poured upon GW for - in the opinions of most observers - trying to lay claim to the use of the term “space marine” in literature when it had been around for decades before the company was even founded.
Naturally, a lot of people in the discussion cited the factors we’ve already talked about to the effect that GW’s writers themselves were obviously and explicitly influenced by writers like Robert Heinlein, Frank Herbert, Isaac Asimov and others in the formulation of their bombastic star feudalist grimdark 40k setting.
The short version is that, after a brief pause, Amazon reversed the decision to block sales of the ebook and GW dropped the whole issue. There was general rejoicing, Maggie Hogarth enjoyed a significant boost to her name recognition and, presumably, sales, and a movement to boycott GW products was briefly born and just as quickly evaporated in the face of the lure of new toy soldiers.
The longer version is that GW did, actually, have a registered trademark in the words “space marine” so far as they applied to games, toys, models and other things related to the wargaming hobby and they had already successfully settled with the maker of Princess Ryan’s Space Marines, a board game, which was re-branded as Princess Ryan’s Star Marines.
And Jaz Purewal, on the Gamerlaw blog, argued that GW’s right to enforce the trademark on the words “space marine” might be legitimate because of the amount of time and money that GW had invested in making “space marine” a distinctive and core feature of their 40k intellectual property.
Furthermore, GW’s Black Library publishing arm had been going great guns in publishing best sellers set in their universe since 2002, with the Horus Heresy series kicking off in 2006 and garnering mainstream attention in the process. And yet… at the time that they brought the claim against Hogarth, it seems that if you searched for the term “space marine” on Amazon books in late 2012, Spots the Space Marine would appear higher than any Black Library publication - none of which had the advantage of using the words “space marine” in their title.
So was the plan really to enforce their right to the term space marine or just an underhanded strategy to improve the Amazon rankings of their novels?
In a way it doesn’t matter. This was, after all, early 2013, not long after the Chapterhouse case had been settled and in which the issue of GW using names and terms that weren’t intellectually distinct had already been raised. And Spots proved that even if GW had a legal right to enforce their trademark - which, I should say, was highly arguable and I don’t necessarily agree with Purewal but, as I have previously mentioned, I Am Not A Lawyer - GW definitely didn’t have a moral right to do so and they would be pilloried by artists, authors and influencers if they attempted to do so again.
The shift in terminology at GW that kicked off at around 8th Edition 40k and has continued since - which saw Space Marines reframed as Astartes, the Imperial Guard as the Astra Militum and the Eldar as Aeldari, among others - was a direct consequence of GW realigning itself behind unique and distinct trademarks that could be safely, inarguably and justifiably enforced if called upon to do so.
2017 Moore vs Games Workshop
And finally… Most of the legal shenanigans so far have mostly been about enforcing their intellectual property rights but, if we want to understand Games Workshop’s modern position as it has most recently been articulated, we need to look at one more case: that of Moore vs Games Workshop.
Almost uniquely, Games Workshop was the defendant in this case, with the Plaintiff being one David Moore of Florida. I won’t dwell too much on the case’s specifics, because Moore’s arguments were unsupported by good evidence bordering on conspiracy theory, and the judge awarded GW a summary dismissal. Suffice to say that Moore outright accused GW of racketeering, price fixing and unfair practice as well as dragging up allegations that they had ripped off Heinlein, Herbert et al in developing their 40k property. Bell of Lost Souls fairly summarised the case as Florida Man vs GW.
The case is worth our attention, though, because although some of the things of which Moore accused GW weren’t unlawful in any way, they absolutely were things that GW did. And they were designed to protect GW’s unique status in the market where they operate. GW very much likes being the silverback gorilla in the room and will act accordingly. Moore’s case was spectacularly weird, but was born from a pattern of escalating business practices by GW leading up to 2017.
First was their attack on digital-only retailers.
They had long taken a position that retailers, who typically enjoyed a 30% discount or more on bulk orders, could re-sell their products at whatever price they liked, leading to online-only retailers with minimal overhead costs offering routine discounts of 20-25% on MSRP, undercutting both GW themselves and the independent bricks-and-mortar stores unable to match their prices. GW’s response was to institute a ban on sales to retailers without a bricks-and-mortar presence: an announcement met with mixed feelings by customers. Some felt this would help support the bricks-and-mortar sites that are often community hubs and playing venues as well as retailers, unlike the digital stores. Others were simply angry at being deprived of their deep discounts.
Next, GW began to pressurise retailers to not offer their products online at all, even if they had a physical store. Retailers who resisted reported that they were de-prioritised for stock replenishments, or sent limited replenishments or even random replenishments to make it impossible for them to allow customers to reliably pre-order out of stock products. And at about the same time there were reports that GW was similarly putting pressure on retailers to limit the discounts offered on MSRP.
To some extent, this turned out to be quite good for the market. Some online retailers responded by opening physical stores, increasing the number of high street outlets for tabletop games. Some responded by expanding their product range offering into companies other than Games Workshop, providing new outlets for companies like Warlord, Mantic, CMON, Fantasy Flight and Corvus Belli, expanding the community’s exposure to alternatives in the market and driving innovation and diversity forwards.
But let’s not kid ourselves that this was GW’s plan all along.
As we’ve established, GW has both the wherewithal and the will to assert what it thinks are its legal entitlements. By 2017 there had been a change in leadership at the top of Games Workshop with Jack Kirby stepping down for former CFO Kevin Rountree. The change heralded a shift in GW’s strategic direction, with more community engagement, wider exploitation of their intellectual properties, a significant investment in public and media relations and higher standards of quality control in manufacturing and logistics.
But GW had also experienced a serious scare in the form of Privateer Press’s unexpected rise, and although they had weathered that particular storm neither their leadership nor their shareholders had any interest in letting anyone come that close again. Although they were prioritising their “soft power” to influence and control the retail market for miniatures wargaming, they weren’t going to back away from flexing their economic muscles when it was to their advantage.
GW is very happy to have competition, as long as the competition never gets big enough to scrape at their sales.
All of this, finally, leads me to the post that Cults3d recently made about communication they had had with Games Workshop, which said…
Bernard, would you do the honours?
Hello everyone, this is Pierre, co-founder of Cults. I’m posting here to inform you that Games Workshop has contacted us through their lawyers to ask us to remove more than 200 creations that infringe - according to them - on their copyright. In this list, there are 65 paying models that we have rejected. The users who are part of this list and who have at least one creation rejected from the site will be informed by email. They will able to edit their model to remove the copyrighted terms. If the editing is sufficient, the creation will be accepted again. Concerning the free models, we have decided not to delete them because of the notion of fan art and we’ll keep fighting on this point.
From now on we have a (rather long) list of terms that will trigger moderation when your paid creations are uploaded. So try to avoid as much as possible these terms when uploading.
Here’s a truncated version of the list that Cults3d has released publicly, with the full list being available only to their creators of which I am not one.
Thanks, Bernard.
And now we’ve had a look at GW’s legal history, we can get a decent insight into what’s going on here.
First, they know very clearly where their intellectual property starts and stops. Between the start of Tolkein and the end of Chapterhouse, those lines have been pretty conclusively debated and drawn in legal terms.
Pierre at Cults3d has given the impression that GW has only asked them to remove items that use GW terminology, and has conceded to block public access to those items only when they are paid-for products. Designs that are free to download remain available.
Now, feel free to dunk on me for siding with the bad guy, here, because it seems like Pierre is being deliberately obtuse. We know that GW can assert copyright over physical designs not just over the terms used to describe those designs. The shape of a space marine shoulder pad alone was subject to tedious amounts of debate in court. Whilst the ability to claim copyright over a shape clearly isn’t something GW can do, they definitely can claim copyright over a shape used in a context that is obviously intended to be identical or nearly identical to the context in which they themselves use it. So I find it extremely improbable that GW’s objection to the designs on Cults3d was exclusively with regard to the terminology used.
Neither Cults3d nor GW has made the content of the C&D letter public, and GW has a policy of no comment on such cases, so Pierre can say what he likes, claim the high ground for being transparent and leave us none the wiser.
Second, Pierre’s assertion that designs made available to download for free count as “fan art” is equally disingenuous and it feels like Cults3d is building itself up to face GW in what could be a landmark case. The question at issue is one of culpability. Is the marketplace that empowers artists to share printable designs culpable for that content? Is it the artists who make and share those designs? Or the customers who choose to print them? Who does the owner of a trademark have to go after for restitution?
When GW went after Brian Beal, they were clear - and the courts agreed - that it was the creator who was culpable. But when a designer produces only a digital file, are they culpable because they are producing something which can be turned into a physical item? Or does culpability only arise when the customer chooses to print it?
Two things arise that I think are worth thinking about. First, it doesn’t seem to me that Pierre or Cults3d have the best interests of the average wargamer in mind. They are moving to protect their interests and the interests of the creators who use their services. The person at the tip of their spear is the casual wargamer who prints minis for their own use. Whether this is intentional on their part I can’t possibly know, but given their bullish response to GW, if this situation ends up in court and Cults3d gets their way, then it is the casual printer who will get stiffed with the bill.
Second is why, exactly, GW is moving against Cults3d now. Previously, they have gone directly to creators and demanded that they amend or remove their designs. But in the first instance I think they have realised that this simply isn’t practical in the global digital milieu in which they’re operating now. Even if they sought to make an example of one or two designers, success would not be guaranteed and the sheer volume of designers dipping into their IP for bucks and lols is vastly greater than the number of pirate casters they used to have to deal with. So they are trying to raise the bar, to limit the ability of digital marketplaces to offer for sale items that infringe copyright and make the marketplace itself culpable for policing its users.
And there’s good grounds for doing so. It’s been established in multiple jurisdictions that Uber is liable for at least some of the actions and conditions of their drivers. There is growing political pressure for platforms like Twitter, Facebook and, yes, YouTube to be held accountable for the content they permit to be disseminated. So the atmosphere is fertile for GW to push for printable object marketplaces to be held similarly accountable.
I have said for some time that GW must know that the printed future is coming quicker for miniatures wargaming than for almost any other industry, and if it’s coming for miniatures wargaming first then that means it’s coming for GW first. There are, it turns out, downsides to being the biggest gorilla in the room. Establishing their ability to control the content on digital marketplaces to protect their intellectual property is an absolutely critical first step towards establishing their ability to control the supply of digital products within their tabletop worlds.
So who should we root for in this impending conflict? Cults3d only wants to protect itself and its artists and make customers liable for what they choose to print, putting a target on each and every home-printing wargamer out there. Whilst GW wants to be able to control and exploit its intellectual property to maintain its continued industry dominance.
Well, oddly, I find myself on Games Workshop’s side.
Not, I hasten to add, because I have much more than intellectual sympathy for their quandary but rather that I think an outcome that makes the marketplaces for printable objects accountable for what their creators offer for download - for money or for free - is one that will encourage creators to be, well, creative. Instead of just replicating things already made by Games Workshop, I hope they will develop interesting alternatives that tick the same emotional boxes but explore a new phase space in the grimdark sci-fi concept. Or even - heaven forfend - start developing their own IPs that can be explored on the tabletop through miniatures agnostic games like Stargrave or Five Parsecs from Home or, dare I say it, Horizon Wars.
Anyway, if you think I’ve missed anything or have your own take on any of the comments I’ve made in this episode, please let me know in the comments. And I’ll speak to you again… next time.
Comments
Precinct Omega
This is a good point, but the counter argument is that it's a downturn from a higher place than they would otherwise occupy.
Gavin Thorpe
The problem with hanging on GW's coattails is that as soon as the gorilla takes a downturn, everyone else goes down too.
Gavin Thorpe
"Instead of just replicating things already made by Games Workshop, I hope they will develop interesting alternatives that tick the same emotional boxes but explore a new phase space in the grimdark sci-fi concept. Or even - heaven forfend - start developing their own IPs that can be explored on the tabletop through miniatures agnostic games like Stargrave or Five Parsecs from Home or, dare I say it, Horizon Wars." Pretty much sums up my view over the last thirty+ years! From Black Tree designs, through Scibor, Mantic, Anvil Industries and others, I see good - some great - sculptors doing legwork for copycat designs and think of the missed opportunities. No slight on the sculptors, everyone needs to make bank. More an observation on a creative vacuum that goes along with publishers only selling debuts and estabished bestsellers and movie studios pumping out virtually risk-free sequels and franchises.
