Trademark Infringement by Games Workshop

[Buck Surdu]

Some months ago, I posted to my Facebook site that the trademark application for Combat Patrol(R) was approved by the US Patent and Trademark Office. I had been writing Combat Patrol(TM) since the rules were first released in 2015. Some trolls on The Miniatures Page told me that I was being evil somehow, but I had already had Battles for Empire poached by another publisher.  Months ago I approach Games Workshop about their use of the term Combat Patrol with respect to a new project they were considering. They apparently blew me off. They have published some new Warhammer 40k game using Combat Patrol in the title, which will of course confuse people and infringe on my trademark.  The way the term Combat Patrol is used in their new products as part of the title will cause confusion among potential customers.  Thanks so much GW for being complete jerks.  They make millions of dollars, but they feel compelled to poach my trademark knowing full well that as a single, independent rules writer I don’t have the resources to take them to court. Wonderful. There is almost nothing right with the world these days. No one has any integrity or honor.  Legality doesn’t matter as much as a big checkbook.

[Logain]

Bummer… that is an unfortunate situation.  But I don’t think it will confuse too many customers. But it WILL drive your search hits down the list.  Hopefully folks interested in CP will be savvy enough that it won’t make much difference.

[Mr. Kingsford]

Maybe some sort of crowdfunding to help with legal costs?  Wasnt there a case in the last 10 years where a company made accessories for Space Marines?  GW was mean to them and they went to court and won.  I think FrothersUK forum has all the details.

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[Mike]

IIRC it was Chapterhouse and they got a partial win. I think the courts decided GW can’t own the shape of a space marine shoulder pad?

Whilst this is appears an uncool move I doubt GW did it on purpose with a mind to steal potential customers from you. I would be amazed if anyone looking for Combat Patrol WW2 wargames rules ended up buying a box of plastic scifi figures from GW thinking they had bought the rules.
However that does not diminish the feelings you no doubt feel.

Maybe with any # of Combat Patrol on social media sites you can work that to your advantage?

[Kitfox]

I suppose it would be mischievous to suggest you send them a formal “Cease and Desist” letter?

Death to all fanatics!

[irishserb]

Just did a search for Combat Patrol, the first hit is GW, and four of the top ten are GW.  Two are for the WWII game.

I’m quite sorry to discover that GW is doing this, particularly given their aggressive pursuit of IP infringement.  I’d be willing to kick in a few dollars towards legal fees, should you choose to pursue this with a crowdfunding effort.   It is just wrong that they do this.

 

 

[John D Salt]

irishserb wrote:

I’m quite sorry to discover that GW is doing this, particularly given their aggressive pursuit of IP infringement. I’d be willing to kick in a few dollars towards legal fees, should you choose to pursue this with a crowdfunding effort.

Agreed, with considerable asperity.

I’ll put $100 towards the fighting fund if it comes to it.

It’s not as if they could not equally well have chosen “fighting patrol” or “battle patrol” instead of “combat patrol”.

Meanwhile, people might like to send polite notices drawing attention to their disapproval of GW’s behaviour to their IP infringement people at [email protected]

All the best,

John.

[Tactical Painter]

The term ‘combat patrol’ doesn’t belong to anybody and it’s use by the military predates its use by Buck or GW. The name ‘combat patrol’ has been patented for a set of WWII wargame rules, GW have used it to refer to a range of plastic fantasy figures. There is no conflict. The recent O Group rules feature a mechanic called ‘combat patrols’ this doesn’t infringe on anyone else’s use as the term ‘combat patrol’ doesn’t belong to any of the above parties.

Similarly, no one has copyright on game rule mechanics. I could copy every rule mechanic in combat patrol and call it ‘squad leader action WWII’ and as long as I did not copy the words used in the original rules and wrote it in a completely new style and with new pictures there would be no copyright infringement. After all who owns the copyright to using small figures as game pieces? or the use of a measuring device for movement or range? or the rolling of dice or drawing of cards for resolving random outcomes?

The OP is complaining about the infringement of his IP for a set of miniature wargaming rules using a name that he did not create, for a type of gaming he did not invent, using a number of game mechanics that he did not invent. Even the fact that he has combined these game mechanics into a set of rules in a way no one has done before does not make them his property. What he does have the rights to are the words he has used in the rulebook, that is his work and if that is copied word for word then his copyright has been infringed.

 

The Tactical Painter - painting miniature armies for battles on the table top.
http://www.thetacticalpainter.blogspot.com/

[Mr. Average]

I think the distinction is being blurred between a copyright and a trademark. I don’t think the OP is referring to copyright infringement, I believe he’s claiming registration of a trademark for his game system within a particular field or class of business. Which may or may not hold up, but it’s not the same as what you’re saying. It would depend on how broadly the class of business or product could be proved as applying to. I’m not a lawyer so I wouldn’t venture to say. But while it’s true you can’t copyright a name you can certainly trademark it for a particular purpose.

If I invented a battery and marketed it as a Duracell, saying you can’t copyright a name wouldn’t excuse me from infringing on the existing product trademark. If I invented a new kind of prisoner restraint called a Duracell, there might still be some claim against me for trademark infringement. I mean I could be wrong but that’s my understanding of how it works.

[Mike]

Yup. I got legal advice a few years back when someone else was using Crom’s Anvil first and they wanted to sue me for Trade mark infringement.

[Jonathan Gingerich]

Not a lawyer, but my understanding of a trademark is that it is used to mark one’s product. It would not give one additional rights to its use in a title. Infringement would come if customers saw “Warhammer 40,000 Combat Patrol” and bought it thinking they were getting Buck Surdu goodness rather than Games Workshop, uh, sizzle. Far more likely, in my estimation, that some of your sales will be to customers thinking your product is backed by Games Workshop.
JG

[Mr. Average]

If the title is also a product Mark, then I think it would, unless the class of product were narrowly construed. This is just from reading about it, mind you.

https://en.m.wikipedia.org/wiki/Trademark

I’m not sure it would hold up that a more famous product could say “even though you own the trademark, I’m more famous so you are really stealing from me,” unless it were well established beforehand, and some case of trademark trolling? But it might bear some weight in deciding the extent of damages, if any. Or whether the class of product were “Games” generally, or science fiction vs. historical games, etc.

In any case, I’m clearly no expert, but if anything this points up the perils of getting advice from strangers on war games forums.

[MartinR]

I’m a bit baffled by this, “Apple” is  trademark of Apple Inc.,  but it doesn’t preclude other organisations or people using the word Apple in the names of their products, or even the names of their companies.

"Mistakes in the initial deployment cannot be rectified" - Helmuth von Moltke

[Mike]

MartinR wrote:

I’m a bit baffled by this, “Apple” is trademark of Apple Inc., but it doesn’t preclude other organisations or people using the word Apple in the names of their products, or even the names of their companies.

This depends on what you use Apple for. Selling fruit and veg, probably ok, as you are in a different trade. Selling wargames rules, again a different trade so probably ok. Selling tech like phones, probably not ok.
Depends on your trade and if confusion while arise.

[irishserb]

A few thoughts regarding the discussion:

First, a trademark, copyright, and patent are three  different creatures, that address different things, and shouldn’t be confused with one another.

Trademarks can vary for a number of reasons, starting with the jurisdiction of the entity with whom the trademark is registered.  For example, in the US, I can establish one at the state or federal level, and the limitations imposed by the trademarks are very different.

I’m aware of GW stopping the use of the term “Space Marine” within the gaming industry through a trademark, both in commercial use outside of the Warhammer game system, and even in private, non-commercial use within the hobby (which makes me especially curious).  These restrictions limited use in titles, advertising terminology, and in body of text.  I don’t know specific details about the determinations in either case.

I’m aware of a game convention in Ohio being forced to change its name, because a furniture company in Illinois had a “trademark” on the word that was used as the name of the convention.  This limitation crossed state lines, type of product and market place. My understanding is that the game convention had use of the name prior to the furniture company filing the tradmark.

I am not remotely close to being an attorney or expert regarding trademarks, patents, or copyrights.  My limited experience in working with all three,  does not seem totally consistent with all of what has been written above, thus I have offer these comments.  Probably best that Mr. Surdu seek the advice of a professional, should he choose to pursue this issue.

[Buck Surdu]

I have been in contact with a lawyer from GW.  We have had a cordial conversation, and I think we are coming to an amicable solution by which we will both use the term “combat patrol” in a way that distinguishes and protects the two sets of IP.  At this point, my opinion of the willingness of GW to work with me on this issue is very positive.

[Phil Dutré]

One thing I learned over the years is not to offer advice or opinion on copyright/trademark/IP/… issues. Sure, one can complain about it, but the only thing that matters is what IP lawyers say and eventually what a court says. Everything else usually is uninformed opinion.

[Mr. Average]

Buck Surdu wrote:

I have been in contact with a lawyer from GW. We have had a cordial conversation, and I think we are coming to an amicable solution by which we will both use the term “combat patrol” in a way that distinguishes and protects the two sets of IP. At this point, my opinion of the willingness of GW to work with me on this issue is very positive.

Good! A sound compromise is probably better than an aggressive, take-no-prisoners approach. I don’t do a ton with IP anymore but I read and sign a lot of contracts and finding reasonable agreements is always the best approach.

[Paint it Pink]

People have discussed this topic, but I will add my opinion, which is based in doing courses on intellectual property, copyright, and trade marks. It’s complicated.

Trade Marks can be defended, but to register a word as a Trade Mark it needs to be ‘strong,’ so Space Marine is not a strong TM and has been challenged. Likewise Combat Patrol. Apple only gets the specific protection when applied to its products.

Of course, a corporation with enough money, like Disney, then you’ll just be worn down by the costs of pursuing the matter.

One is good, more is better
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[Jonathan Gingerich]

All’s well that ends well. I think the discussion is pretty thoughtful. Remembper, unlike patents or copyright, trademarks are principally intended to protect the consumer.

For a real intriguing case, look at the current issue between Nike and MSCHF over the latter’s artistically modified Nike “Satan Shoes”.

[Author]

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