Games Workshop moves to shut down Warhammer Alliance

Warhammer Alliance has been serving the needs of the Warhammer Online community pretty much since the game was announced. In an astounding move today, Games Workshop has filed a lawsuit against Warhammer Alliance demanding it hand the site over to GW, and pay damages. Curiously they’re also insisting on a trial by jury, in the US state of Maryland, which is likely to be inconvenient for the defendants, and makes the whole business much more expensive.

There are some obvious flaws in the lawsuit. It claims that the domain was registered in 2009 with the intent of cybersquatting, but a whois check clearly shows that the domain was registered in 2004. Not to mention that I know the site is older than 2009 because I’ve been posting there a hell of a lot longer than that. It is a provably false claim.

In this post Mark Jacobs, producer of Warhammer Online, laid out why there would be no official forums. Oh, and he posted it ON WARHAMMER ALLIANCE. IN 2008.:

That’s why I don’t want to have official forums. Whether it was SOE, Blizzard or us, official or semi-official forums are exactly like I described above for every successful MMORPG that I have played or watched from afar (and that is *most* of them). The unsuccessful ones were even worse. The problem is that most people who read the boards are looking for information and a reasonable number of people want to cause trouble, “grief” the forums or simply get their jollies by saying and doing things that they wouldn’t do in real life. As usual, a small percentage of people make life more difficult for everyone else. Back when games had hundreds of people playing, well, no big deal. We ban those guys and life returns to normal. With millions of subs for WoW and hopefully lots and lots for WAR, well, it becomes much more complicated, difficult and soul-sucking for the devs and the community people. I wouldn’t want anyone to go through what Sanya and I had to go through (and she had it worse since she is a woman and that brought out the worst in some people) in the early days of DAoC. How she and other community managers put up with the kind of name calling, insults, vulgarity, profanity without losing their minds is amazing.

So there were no official forums. Instead, fan-based ones were intended to fill the gap, and this was encouraged by Mythic, who got all the benefits of a forum without having to pay to host or staff it. Warhammer Alliance ended up being the main one of these, being used by the developers to interact with players. Games Workshop is SHOCKED that a forum for Warhammer Online might mention Warhammer in its name. If mentioning the name of the game that you are about is indictable, then just about every game-specific website is in a whole lot of trouble. Will they go after Warhammer Vault, or Warhammer Stratics? The Warhammer Online wikia? They all carry at least as many adverts as Warhammer Alliance.

Last year, in an about turn, Mythic decided it wanted to have official forums after all, but that clearly does not suddenly cause existing forums to retroactively become inappropriate.

It has been a couple of decades since I stopped liking Games Workshop terribly much. They used to be a nice little independent gaming company here in the UK that railed against the unfair practises of the big guys, such as TSR (remember them?). It didn’t take too much success before they became “the man”, and realised how high they could push their prices (I used to pay 50 pence for 3 lead miniatures), but this lawsuit is outrageous, even for them.

It is unclear at this time as to whether Warhammer Alliance will dispute the claim. Given the potentially crippling costs of defending this suit, I would not blame them for just backing down, even though it would be another victory for bullying corporations. I’m not a lawyer, so I can’t be certain of the lawsuit’s legal merits, but it is certainly a disastrous bit of public relations.

The full text of the lawsuit is after the jump. The legalese will make your head spin, or at any rate it set mine into a whirl, but it is worth a read.:

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND Northern Division

GAMES WORKSHOP LIMITED, 6711 Baymeadow Drive Glen Burnie, Maryland 21060 Plaintiff,

v.

CURSE, INC. 351 California Street Suite 1450 San Francisco, CA 94104 Civil Action No. 1:10-cv-00787

and
JURY TRIAL DEMANDED

YVES THIEBLOT 351 California Street Suite 1450 San Francisco, CA 94104

and

QUANTAM EQUITY S.A. 11 B, Boulevard Joseph II L-1840 Luxembourg Defendants.
COMPLAINT FOR TRADEMARK INFRINGEMENT; CYBERSQUATTING; DILUTION; UNFAIR AND DECEPTIVE TRADE PRACTICES; AND UNFAIR COMPETITION

Games Workshop Limited, by its attorneys, FOLEY & LARDNER LLP, for its Complaint against The Curse and Yves Thieblot and Quantam Equity S.A. (collectively “Defendants”), alleges as follows:

PARTIES AND JURISDICTION

1. Games Workshop Limited is a United Kingdom corporation, having an address in the United States at 6711 Baymeadow Drive, Glen Burnie, Maryland 21060.

2. Curse, Inc. is a Delaware corporation having an address at 351 California Street Suite 1450, San Francisco, CA 94104

3. Yves Thieblot/Christian Thieblot is an individual and, upon information and belief, the principal owner of Curse, Inc., having an address at 351 California St, Suite 1450 San Francisco, CA 94104-2415.

4. Quantam Equity S.A. Luxemburg Société de droit, is a Luxemburg company having an address at 11 B, Boulevard Joseph II L-1840 Luxembourg.

5. This is an action for trademark infringement under 15 U.S.C. § 1114(1) and common law; for use of false designations of origin under 15 U.S.C. § 1125(a); for dilution under 15 U.S.C. § 1125(c), for cybersquatting under 15 U.S.C. § 1125(d); for violation of the Maryland Consumer Protection Act under Md. Code Ann., Com. L. § 13-301 et seq.; and for unfair competition under Maryland common law.

6. This Court has subject matter jurisdiction over the claims pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338, and supplemental jurisdiction over the claims arising under the statutory and common law of the State of Maryland pursuant to 28 U.S.C. §1367(a) because the state law claims are so related to the federal claims that they form part of the same case or controversy.

7. Upon information and belief, at all times material to this action, each of the Defendants was the agent, servant, employee, partner, alter ego, subsidiary, and/or joint venturer of each of the other Defendants; that the acts of each of the Defendants were performed in the scope of such relationship; that in doing the acts complained of herein, each of the Defendants acted with the knowledge, permission, and/or consent of every other Defendant; and that each of the Defendants aided and/or abetted the other Defendants in the conduct complained of herein.

8. This Court has personal jurisdiction over defendant Curse, Inc. because, together with the other Defendants, and as set forth more fully herein, it conducts substantial business within this District related to the unlawful activities at issue in this Complaint, and because the harm suffered by Plaintiff within this District flows directly from such business conducted by Defendants.

9. This Court has personal jurisdiction over Yves Thieblot because, as an officer and principal owner of Curse, Inc., and together with the other Defendants as set forth more fully herein, he conducts substantial business within this District related to the unlawful activities at issue in this Complaint, and because the harm suffered by Plaintiff within this District flows directly from such business conducted by Defendants.

10. This Court has personal jurisdiction over Quantam Equity because, together with the other Defendants, and as set forth more fully herein, as part of its business relationship with Curse, Inc., described more fully herein, it conducts substantial business within this District related to the unlawful activities at issue in this Complaint, and because the harm suffered by Plaintiff within this District flows directly from such business conducted by Defendants.

11. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) because a substantial part of the events giving rise to the claims occurred in this District.

FACTS COMMON TO ALL COUNTS
A. Games Workshop’s Business and WARHAMMER Trademark

12. Since at least as early as 1984, Games Workshop has sold in the United States games, models, parts and equipment therefore and related items and services under the name and trademark WARHAMMER, and, since long prior to the acts of Defendants complained of herein, the WARHAMMER trademark has come to identify Plaintiff’s goods and services and to distinguish them from the goods and services of others.

13. Plaintiff’s WARHAMMER game has achieved enormous success, and for many years has been among the best known and most popular games in this country.

14. As a result of the great success of Games Workshop’s WARHAMMER games, since long prior to the acts of Defendants complained of herein, the name and trademark WARHAMMER has come to represent substantial and highly valuable goodwill belonging exclusively to Plaintiff.

15. Plaintiff’s WARHAMMER trademark has for many years been the subject of registrations on the Principal Register in the United States Trademark Office, including the following registrations:

WARHAMMER Reg. No. 2,718,741 for computer game programs; role play games, skirmish games, fantasy/science fiction games; and computer software for playing games; role playing game magazines, books and manuals; comic books; rule books for playing games printed instructional materials in the area of hobby games, skirmish games, war games, table top games and role playing games; equipment sold as a unit for playing table top hobby battle games in the nature of war games, skirmish games, role playing games and science fiction games; miniatures and models for use in hobby games, war games, skirmish games, role playing games and science fiction games; and kits of parts for constructing toy models, namely, landscapes, scenery, and action figures.

WARHAMMER 40,000 Reg. No. 3,707,457 for “Computer game discs; computer game software; interactive multimedia computer game program; interactive video game programs; video game discs; video game software; downloadable electronic publications in the nature of computer game instruction manuals, rule books for playing games, and magazines and journals on the subject of war games, skirmish games, role playing games, battle games, and fantasy/science fiction games.”

16. Plaintiff’s foregoing WARHAMMER trademarks (collectively, the “WARHAMMER Marks”) are valid, subsisting, unrevoked and uncanceled, and Registration No. 2,718,741 is now incontestable under the provisions of 15 U.S.C. § 1065.

17. The WARHAMMER Marks are now, and since long prior to the acts of Defendants complained of herein have been, widely recognized throughout the United States and at all relevant times have been famous marks within the meaning of 15 U.S.C. § 1125(c).

B. Defendants’ Use of the Trademark WARHAMMER ALLIANCE and the Domain Name warhammeralliance.com

18. Upon information and belief, sometime in or about 2009 Defendants acquired the Internet domain name warhammeralliance.com.

19. Defendants’ domain name registration fails to provide accurate or complete “whois” information for the subject domain name, and includes no contact information, but, rather, is registered anonymously through an entity called “Domains By Proxy.” Upon information and belief, said registration is maintained anonymously to conceal the identities of Defendants.

20. Upon information and belief, Defendants knowingly provided incomplete or materially false contact information in maintaining the registration for the warhammeralliance.com domain name.

21. Defendants host a website at the URL warhammeralliance.com, which website prominently displays the name and mark WARHAMMER ALLIANCE.

22. Defendants’ website at the URL warhammeralliance.com displays HTML links featuring banner advertisements, and, upon information and belief, when Internet users click on one or more of the displayed HTML advertisements at the warhammeralliance.com website, Defendants receive payment from one or more advertisers, search engines, or affiliate programs.

23. Upon information and belief, many consumers of Plaintiffs’ WARHAMMER products and services are members of and users of Defendants’ website, including many such members and users in the State of Maryland.

24. On March 11, 2008, Defendant Quantam Equity applied to register the trade name CURSE and the logo used by Defendants on the Warhammeralliance.com website.

25. Upon information and belief, Quantam Equity is affiliated with Defendants Curse and Thieblot and is complicit with them in the conduct complained of herein.

26. The domain name warhammeralliance.com and the mark WARHAMMER ALLIANCE incorporate in their entirety Plaintiff’s WARHAMMER trademark.

27. The domain name warhammeralliance.com and the mark WARHAMMER ALLIANCE itself literally states and implies that Defendants and their business are in an “alliance” with Plaintiff and its products and services offered under the WARHAMMER Marks.

28. The mark WARHAMMER ALLIANCE and the domain name warhammeralliance.com are so similar to Plaintiff’s WARHAMMER Marks as to be likely to cause confusion, to cause mistake, or to deceive.

29. The WARHAMMER Marks were distinctive at the time Defendants began using the mark WARHAMMER ALLIANCE and acquired the registration for the domain name warhammeralliance.com.

30. The WARHAMMER Marks were famous at the time Defendants began using the mark WARHAMMER ALLIANCE and acquired the registration for the domain name warhammeralliance.com.

31. Defendants’ use of the mark WARHAMMER ALLIANCE and the warhammeralliance.com domain name has been without Plaintiff’s authorization or consent.

32. Upon information and belief, Defendants’ acts complained of herein have been willful and malicious, and intended to trade upon the reputation of Plaintiff and its products and services sold under its WARHAMMER Marks and thereby cause harm to Plaintiff.

FIRST CAUSE OF ACTION [Trademark Infringement Under 15 U.S.C. § 1114(1)]

33. Plaintiff realleges and incorporates by reference Paragraphs 1 through 32 as though fully set forth herein.

34. Defendants’ use in commerce of the trademark WARHAMMER ALLIANCE and the domain name warhammeralliance.com is likely to cause confusion, or to cause mistake, or to deceive.

35. The foregoing conduct of Defendants constitutes trademark infringement in violation of 15 U.S.C. §1114(1).

36. Defendants’ conduct as aforesaid has caused great and irreparable injury to Plaintiff, and unless such conduct is enjoined, it will continue and Plaintiff will continue to suffer great and irreparable injury.

37. Plaintiff has no adequate remedy at law.

SECOND CAUSE OF ACTION [False Designations of Origin Under 15 U.S.C. § 1125(a)]

38. Plaintiff realleges and incorporates by reference Paragraphs 1 through 37 as though fully set forth herein.

39. Defendants’ use in commerce of the trademark WARHAMMER ALLIANCE and the domain name warhammeralliance.com is likely to cause confusion, or to cause mistake, or to deceive the relevant public that Defendants, their products and services sold and offered for sale under the trademark WARHAMMER ALLIANCE, their warhammeralliance.com website and advertisements displayed at said website are authorized by or are affiliated with Plaintiff.

40. The above-described acts of Defendants constitute use of false designations of origin and false and misleading descriptions or representations that are likely to cause confusion, to cause mistake or to mislead as to the affiliation, connection or association of Defendants or their goods or services with Plaintiff and its goods and services sold under the WARHAMMER Marks in violation of 15 U.S.C. §1125(a).

41. Defendants’ conduct as aforesaid has caused great and irreparable injury to Plaintiff, and unless such conduct is enjoined, it will continue and Plaintiff will continue to suffer great and irreparable injury.

42. Plaintiff has no adequate remedy at law

THIRD CAUSE OF ACTION [Dilution Under 15 U.S.C. § 1125(c)]

43. Plaintiff realleges and incorporates by reference Paragraphs 1 through 42 as though fully set forth herein.

44. The WARHAMMER Marks are now and at all relevant times have been famous within the meaning of 15 U.S.C. § 1125(c)(2).

45. Defendants’ use in commerce of the trademark WARHAMMER ALLIANCE and the domain name warhammeralliance.com is likely to create associations that will impair the distinctiveness of Plaintiff’s WARHAMMER Marks.

46. Defendants’ conduct as aforesaid has caused great and irreparable injury to Plaintiff, and unless such conduct is enjoined, it will continue and Plaintiff will continue to suffer great and irreparable injury.

47. Plaintiff has no adequate remedy at law.

FOURTH CAUSE OF ACTION [Cybersquatting Under 15 U.S.C. § 1125(d)]

48. Plaintiff realleges and incorporates by reference Paragraphs 1 through 47 as though fully set forth herein.

49. Defendants’ registration and use of the warhammeralliance.com domain name constitutes cybersquatting in violation of 15 U.S.C. § 1125(d).

50. Defendants’ conduct as aforesaid has caused great and irreparable injury to Plaintiff, and unless such conduct is enjoined, it will continue and Plaintiff will continue to suffer great and irreparable injury.

51. Plaintiff has no adequate remedy at law.

FIFTH CAUSE OF ACTION [Violation of Maryland Consumer Protection Act]

52. Plaintiff realleges and incorporates by reference Paragraphs 1 through 51 as though fully set forth herein.

53. The State of Maryland has an important interest in ensuring that persons and entities doing business with Maryland residents fully comply with Maryland laws.

54. Upon information and belief, Defendants have knowingly made false and misleading representations as to the source of their goods and services, and knowingly made false representations as to their affiliation with Plaintiff.

55. The services offered by the parties implicate the public interest.

56. Defendants’ unfair and deceptive acts and practices as alleged herein are intended to, have the tendency to, and are likely to cause dilution of Plaintiff’s WARHAMMER Marks and confusion, mistake, or deception among the public as to the source, sponsorship, affiliation, endorsement, or approval of the Defendants’ goods or services sold under the WARHAMMER ALLIANCE name or at the warhammeralliance.com website.

57. The conduct complained of herein constitutes unfair and deceptive trade practices, in violation of Md Code Ann. Com. L. § 13-301(2)(i)-(ii).

58. Defendants’ conduct as aforesaid has caused great and irreparable injury to Plaintiff, and unless such conduct is enjoined, it will continue and Plaintiff will continue to suffer great and irreparable injury.

59. Plaintiff has no adequate remedy at law.

SIXTH CAUSE OF ACTION [Common Law Unfair Competition–Trademark Infringement]

60. Plaintiff realleges and incorporates by reference Paragraphs 1 through 59 as though fully set forth herein.

61. Since at least 1984, since long prior to the acts of Defendants complained of herein or of any other entity, Plaintiff has used the WARHAMMER Marks to distinguish its products from those of competitors.

62. Defendants have used in commerce the WARHAMMER Marks and colorable imitations thereof, without the authorization or consent of Plaintiff, in connection with the sale and offer for sale of goods and services of a similar class as those sold by Plaintiff in this District.

63. Defendants’ use of the WARHAMMER Marks is calculated to, likely to, and does in fact confuse and deceive consumers about the origin of Defendants’ goods and services.

64. The foregoing conduct of the Defendants constitutes the infringement and misappropriation of Plaintiff’s common law rights in the WARHAMMER Marks in violation of the common law of the State of Maryland.

65. Defendants’ conduct as aforesaid has caused great and irreparable injury to Plaintiff, and unless such conduct is enjoined, it will continue and Plaintiff will continue to suffer great and irreparable injury.

66. Plaintiff has no adequate remedy at law.

SEVENTH CAUSE OF ACTION [Common Law Unfair Competition]

67. Plaintiff realleges and incorporates by reference each of the allegations contained in Paragraphs 1 through 66 of this Complaint as though fully set forth herein.

68. By taking advantage of the goodwill and business reputation built up through Plaintiff’s WARHAMMER marks, Defendants have deceptively passed off their goods and services as the goods and services of Plaintiff, and have thereby received a profit which they would not have received but for such deception.

69. The foregoing conduct of Defendants constitutes unfair competition under the common law of the State of Maryland.

70. Defendants’ conduct as aforesaid has caused great and irreparable injury to Plaintiff, and unless such conduct is enjoined, it will continue and Plaintiff will continue to suffer great and irreparable injury.

71. Plaintiff has no adequate remedy at law.

JURY DEMAND

Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiff demands a trial by jury as to all issues so triable in this action.

WHEREFORE, Plaintiff respectfully requests judgment against Defendants as follows:

1. Preliminarily and permanently enjoining Defendants, their agents, representatives, employees, assigns and suppliers, and all persons acting in concert or privity with them, from using the name or mark WARHAMMER ALLIANCE, the domain name warhammeralliance.com, or any other name or mark or domain name that is likely to cause confusion, to cause mistake or to deceive with respect to Plaintiff’s WARHAMMER Marks or from otherwise infringing or diluting the WARHAMMER Marks, or from competing unfairly with Plaintiff;

2. Directing Defendants to transfer to Plaintiff the domain name registration for warhammeralliance.com;

3. Awarding Plaintiff statutory damages under 15 U.S.C. § 1117(d);

4. Awarding Plaintiff its damages and Defendants’ profits derived by reason of the unlawful acts complained of herein as provided by law;

5. Awarding Plaintiff treble damages as provided under 15 U.S.C. § 1117; and

6. Awarding Plaintiff its reasonable attorney fees, prejudgment interest, and costs of this action as provided by law.

Dated: March 29, 2010 Respectfully submitted,

By: /s/ Benjamin Dryden Benjamin R. Dryden, Federal Bar No. 29067 FOLEY & LARDNER LLP 3000 K Street, N.W., Suite 600 Washington, D.C. 20007 Telephone: (202) 945-6128 Facsimile: (202) 672-5399 Email: bdryden@foley.com

Jonathan E. Moskin FOLEY & LARDNER LLP 90 Park Avenue New York, New York 10016 Telephone: (212) 682-7474 Facsimile: (212) 687-3229 Email: jmoskin@foley.com

Attorneys for Plaintiff.

12 comments to Games Workshop moves to shut down Warhammer Alliance

  • Longasc

    Warhammer Alliance should stop hosting any forum for Games Workshop and play games of another company. This is ridiculous.

  • [...] reports the news today that Games Workshop, the company behind the Warhammer IP dating back to its tabletop gaming [...]

  • That certainly isn’t right. I wonder if Games Workshop wants the URL, which is why they’re going to court.

  • [...] to Arkenor, over at Ark’s Ark, I learned that Games Workshop had sued Warhammer Alliance for mostly trademark issues.  First off, Games Workshop is not really the bad guy.    They have [...]

  • sleepybrett

    GW recently used similar tactics to remove a huge amount of fan content for their board games (mostly Space Hulk) from boardgamegeek.com. It’s the most wrongheaded move I’ve ever seen by a company that depends on fans to survive.

    Read more about it here:
    http://boardgamegeek.com/thread/468467/games-workshop-and-boardgamegeek

    Bottom line, Games Workshop is f’n retarded.

  • pinchy

    @sleepybrett except the whole boardgamesgeek thing was about them posting what was pretty much the full rules of the games online and using Games Workshops artwork without any credit in the things that were posted on there. While a lot of the stuff was OOP they had just rereleased Space Hulk so I can see why they weren’t too happy over that, nor would I imagine Fantasy Flight would be seeing they have the license to remake most of the old GW games (such the new version of Horus Heresy). Really it wasn’t particularly surprising that GW asked them to remove or alter the offending material, instead boardgamegeeks just decided to delete it all. Comparing the two situations doesn’t make much sense.

    This, however, does seem to be pretty stupid in regards to actually suing Warhammer Alliance. I know that there is a very long document in the legal section of GWs website that explains what they are and are not happy with (whether it’s actually legally correct or not I have no idea but if one wanted to create a site on their games and avoid any possible problems like this then reading it would have been a good move) that does mention that they ain’t happy with people using their trademarks in website names, but I don’t see how this gains them anything that a friendlier approach could not have also achieved.

  • Longasc

    Someone at KillTenRats mentioned that Curse if commercial, and he is quite right about that. Still, not sure if this action is really that useful.

    • Still, the developers encouraged this forum, so it is rather unfair to suddenly turn on it. And the legal arguments used would apply to many many other sites.

  • sleepybrett

    @pinchy that is all fine and good except that instead of approaching BGG in a friendly manner they sent lawyers, lawyers with lawsuits. That’s a dandy way to alienate your fans.

  • pinchy

    Yeah sleepybrett I agree with you that Games Workshops legal department needs to learn how to be more friendly in how they deal with fans, even if just as a first step (then lay the smack down if people ignore them).

    The thing is I’m not sure that they actually see some groups like BGG as actually being fans. Why I have no insight into GWs inner workings the corporates have seemed pretty paranoid about seemingly minor things for quite a while. If they perceived posting rules for their games as being equivalent to piracy (in that people were posting things online that GW was trying to sell for money either directly to the public or as licenses) then I can see why they would send in the lawyers. It’s a perspective I know a lot of people would disagree with but it would explain some of their behaviour, in the wierd universe that GW corporate seems to live in then it seems plausible to me. Not defending everything they do (or even half of it sometimes) but it’s a sad reality that they are a publicly traded corporate entity rather than the gaming company that many of us remember with such fondness.

    Also just re-reading Ark’s original post it’s not really that curious that the papers were filed in Maryland, GW’s US HQ has been located there for ages (though they are apparently moving it in the near future).

  • That does certainly make Maryland the obvious choice of venue. It was mainly the insistence on a trial by jury that I found curious though. That’s not something I’ve seen before in this sort of website lawsuit, though as I’ve said, I’m no lawyer, and it might be how Maryland law works. Feels to me like they’re trying to make it as scary as possible though.

  • That’s not even 10 mitunes well spent!

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