Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 1 of 25 PageID #:18873
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`GAMES WORKSHOP LIMITED,
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`vs.
`
`
`
`
`
`
`
`
`
`CHAPTERHOUSE STUDIOS, LLC,
`
`
`
`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`) Case No. 10 C 8103
`)
`)
`)
`)
`
`
`
`MEMORANDUM OPINION AND ORDER
`
`MATTHEW F. KENNELLY, District Judge:
`
`
`
`Games Workshop (GW) has sued Chapterhouse Studios (Chapterhouse),
`
`alleging copyright and trademark infringement and related state and federal claims. The
`
`parties previously filed cross-motions for summary judgment, which the Court partly
`
`granted and partly denied, leaving a good many of GW’s claims for trial. Games
`
`Workshop Ltd. v. Chapterhouse Studios, LLC, No. 10 C 8301, 2012 WL 5949105 (N.D.
`
`Ill. Nov. 27, 2012). The Court later granted GW leave to amend its complaint to add
`
`similar claims that it had asserted in a second lawsuit against Chapterhouse.
`
`
`
`Each side has again moved for summary judgment. In addition, Chapterhouse
`
`has asked the Court to reconsider part of its prior summary judgment ruling and award
`
`Chapterhouse costs that it incurred in obtaining previously undisclosed correspondence
`
`between GW and the United States Copyright Office. For the reasons stated below, the
`
`Court (1) partly grants and partly denies Chapterhouse’s motion for reconsideration, (2)
`
`
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 2 of 25 PageID #:18874
`
`
`
`denies Chapterhouse’s motion for summary judgment, and (3) partly grants and partly
`
`denies GW’s motion for summary judgment.
`
`Background
`
`
`
`The Court described the relevant factual background in its prior summary
`
`judgment decision. The Court assumes familiarity with that decision.
`
`
`
`In connection with this lawsuit, the parties have exchanged numerous requests
`
`for documents. On September 9, 2011, Chapterhouse asked GW to produce “all
`
`correspondence with any government agency or private copyright registration service”
`
`concerning any work at issue in the case. Def.’s Mot. for Recons., Ex. 2 at 5. GW
`
`responded that it believed it had disclosed all responsive documents but would provide
`
`any additional responsive documents in its possession. Id., Ex. 3 at 2.
`
`
`
`On November 2, 2012, counsel held a telephone conference to discuss the
`
`parties’ contemplated motions in limine. According to Chapterhouse, its counsel
`
`expressed concern to lead counsel for GW about not receiving any further
`
`correspondence between GW and the Copyright Office. Although the parties dispute
`
`how GW’s attorney reacted, it is undisputed that at some point soon after the telephone
`
`conference, GW agreed to supplement its response to the discovery request.
`
`
`
`Chapterhouse’s attorney states in an affidavit that in late October 2012,
`
`Chapterhouse undertook its own investigation into correspondence between GW and
`
`the Copyright Office, and on November 7, it requested documents directly from the
`
`Copyright Office for two of GW’s copyright applications, including an application for
`
`Assault Squad shoulder pads (implicated by entries 46–48 in GW’s second revised
`
`claim chart). On December 12, 2012, approximately two weeks after the Court had
`
` 2
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 3 of 25 PageID #:18875
`
`
`
`issued its ruling on the motions for summary judgment, Chapterhouse received from the
`
`Copyright Office correspondence regarding the Assault Squad shoulder pads
`
`application, which revealed a number of communications between GW’s attorney and
`
`the Copyright Office. GW did not produce any of this correspondence until January 4,
`
`2013, together with its response to Chapterhouse’s first motion for reconsideration.1
`
`
`
`Documents that Chapterhouse obtained from the Copyright Office reflect that
`
`Robin Jones, a Copyright Registration Specialist, e-mailed GW’s attorney on June 7,
`
`2012 in connection with GW’s application. Jones expressed a number of concerns,
`
`many of which appear to be requests for clarification. In her e-mail, however, Jones
`
`stated that “we cannot register the sculpture portion as it is too minimal.” Id., Ex. 5 at 3.
`
`Approximately twenty days later, GW’s attorney responded, asking to speak with Jones
`
`about the “question [she had] regarding the sculptural elements.” Id., Ex. 5 at 4.
`
`
`
`Jones did not respond to the e-mail from GW’s attorney until November 7, 2012,
`
`after GW’s attorney had called the Copyright Office to speak with her about the pending
`
`application. In her response, Jones stated that “[t]he email stated that the ‘sculpture’
`
`was to[o] minimal (it is basically an ‘X’) and could not be registered.” Id., Ex. 5 at 7.
`
`GW’s attorney replied to Jones on December 7, noting that the Court’s summary
`
`judgment decision “ruled that the basic shape of the Games Workshop shoulder pad is
`
`copyrightable (even without surface ornamentation).” Id., Ex. 5 at 10. According to
`
`correspondence produced by GW in January 2013, Jones responded to GW’s attorney
`
`on December 11: “[T]his particular shoulder pad submitted is not copyrightable. [I]t is
`
`1 The Court previously granted Chapterhouse’s first motion for reconsideration in part,
`dismissing with prejudice GW’s claims for copyright infringement of products listed in entries
`115–16 and 122 of the second revised claims chart. Chapterhouse withdrew the remainder of
`its motion. See docket entry 273. Chapterhouse filed its second motion for reconsideration (the
`current motion) on the same day that it filed its current motion for summary judgment.
`
` 3
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 4 of 25 PageID #:18876
`
`
`
`simply circular, with an x or plus sign on it.” Id., Ex. 6 at 2. In response, GW’s attorney
`
`again brought up the Court’s previous ruling and discussed the evidence upon which
`
`the Court had relied. On December 27, 2012, Carol Frenkel, a Supervisory Registration
`
`Specialist, notified GW’s attorney that she had taken over the application and would
`
`make a determination shortly.
`
`
`
`On January 4, 2013, Frenkel wrote GW a letter stating that the Copyright Office
`
`could not register the work. The letter laid out the basic standards for protection under
`
`the federal copyright law and stated that the office had “determined that this particular
`
`work will not support a claim to copyright for 2-Dimensional artwork or sculpture under
`
`the standards described above.” Id., Ex. 7 at 1.
`
`Discussion
`
`I.
`
`
`
`Chapterhouse’s motion for reconsideration and costs
`
`Chapterhouse asks the Court to reconsider its earlier ruling on the
`
`copyrightability of GW’s shoulder pads based on the Copyright Office’s decision to deny
`
`registration of the Assault Squad shoulder pads. Chapterhouse argues that the Court
`
`should defer to the Copyright Office’s finding. It also asks the Court to award
`
`Chapterhouse the $1,039 it spent conducting an independent investigation into GW’s
`
`correspondence with the Copyright Office.
`
`
`
`
`
`A.
`
`Motion for reconsideration
`
`The Court’s earlier summary judgment ruling is interlocutory in nature and thus
`
`may be reconsidered at any time. See, e.g., Morningware, Inc. v. Hearthware Home
`
`Prods., Inc., No. 09 C 4348, 2011 WL 1376920, at *1 (N.D. Ill. Apr. 12, 2011). The
`
`appropriate purpose of a motion for reconsideration is to correct manifest errors of law
`
` 4
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 5 of 25 PageID #:18877
`
`
`
`or fact, or to present newly discovered evidence. Hicks v. Midwest Transit, Inc., 531
`
`F.3d 467, 474 (7th Cir. 2008). “Reconsideration is not an appropriate forum for
`
`rehashing previously rejected arguments or arguing matters that could have been heard
`
`during the pendency of the previous motion.” Caisse Nationale de Credit Agricole v.
`
`CBI Indus., Inc., 90 F.3d 1264, 1270 (7th Cir. 1996).
`
`
`
`Chapterhouse contends that the Copyright Office’s January 4, 2013 letter
`
`rejecting GW’s application for copyright registration is newly discovered evidence and is
`
`persuasive authority to which the Court should defer. Accordingly, Chapterhouse seeks
`
`reconsideration with regard to the GW products identified in entries 4–7, 12–13, 19–22,
`
`46–62, 64–65, 97–98,2 and 101–02 of GW’s second revised copyright claim chart. GW
`
`argues that the Court should not give deference to the Copyright Office’s rejection of its
`
`application because, among other things, the January 2013 letter does not constitute
`
`final agency action.
`
`
`
`Courts differ with regard to what level of deference, if any, should be given to a
`
`rejection by the Copyright Office. Compare Norris Indus., Inc. v. Int’l Tel. & Tel. Corp.,
`
`696 F.2d 918, 922 (11th Cir. 1983) (“The district court properly gave some deference to
`
`the expertise of the Register in its decision.”), with Aqua Creations USA Inc. v. Hilton
`
`Hotels Corp., No. 10 Civ. 246, 2011 WL 1239793, at *3 (S.D.N.Y. Mar. 28, 2011)
`
`(“Where the Copyright Office denies registration, and the unsuccessful applicant
`
`subsequently brings an infringement action, courts nonetheless make an independent
`
`2 Chapterhouse also asks for reconsideration regarding products identified in entries 99–100
`because GW’s claimed copyright in them is based solely on the size and shape of the shoulder
`pads. In its previous decision, however, the Court noted that GW had dropped all copyright
`claims implicated by products identified in entries 99 and 100 of the second revised claim chart.
`Games Workshop, 2012 WL 5949105, at *4. To the extent GW maintains any copyright claims
`for products in entries 99–100, the Court grants Chapterhouse’s motion and dismisses the
`claims with prejudice.
`
` 5
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 6 of 25 PageID #:18878
`
`
`
`determination as to copyrightability.”). Further complicating the issue is the fact that the
`
`Copyright Office itself does not consider correspondence to be “final agency action” until
`
`the Review Board renders a decision after a second request for reconsideration, 37
`
`C.F.R. § 202.5(g), and GW has not submitted its application for even a first
`
`reconsideration. The Court need not resolve this issue, however, because even
`
`assuming that the Copyright Office’s rejection is entitled to some deference, the Court
`
`nonetheless concludes that GW’s shoulder pads are eligible for copyright protection.
`
`
`
`Copyright Registration Specialist Jones denied GW’s copyright claim on the
`
`basis that the sculpture portion of the shoulder pads is too minimal; she stated that it is
`
`“simply circular, with an x or plus sign on it.” Def.’s Mot. for Recons., Ex. 6 at 2.
`
`Jones’s initial response, however, indicated that GW may be able to obtain registration
`
`for the two-dimensional “graphics of the pads . . . .” Id., Ex. 5 at 3. Based upon the
`
`graphics included in entries 46–48 of the second revised claim chart, which the Court
`
`assumes was the two-dimensional artwork submitted to the office, the Court does not
`
`see any basis to extend copyright protection to one and not the other. To the contrary,
`
`the graphic is by nature two-dimensional and appears more rudimentary and
`
`commonplace than the three-dimensional shoulder pads that GW sells:
`
`
`
` 6
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 7 of 25 PageID #:18879
`
`
`
`
`
`At some point the Copyright Office changed its mind about the two-dimensional
`
`artwork, and in the January 2013 letter that Supervisory Registration Specialist Frenkel
`
`sent to GW, she concluded that both the two-dimensional artwork and the sculpture
`
`were not copyrightable. Frenkel’s letter, however, contained no explanation for this
`
`determination. The letter simply recited, in summary fashion, several basic copyright
`
`law principles—the claimant must have independently created the work, the work must
`
`possess at least a minimal amount of creativity, and copyright law does not protect
`
`ideas or concepts—and it concluded, in a single sentence, that “[a]fter careful
`
`consideration, we have determined that this particular work will not support a claim to
`
`copyright for 2-Dimensional artwork or sculpture under the standards described above.”
`
`Id., Ex. 7 at 1. This conclusory statement does not identify what standard or principle of
`
`copyright law Frenkel relied upon in rejecting GW’s claim. Even assuming that Frenkel
`
`concluded the item was not sufficiently creative, the letter gives no hint regarding why or
`
`how she came to that conclusion.
`
`
`
`In addition, the Court notes that in its previous summary judgment ruling, the
`
`Court considered the context within which the shoulder pads exist. The Court noted
`
`that the shoulder pads were unusually large as compared to the size of the Space
`
`Marine’s head and that the proportional difference was sufficient to constitute a creative
`
`addition sufficient to afford the shoulder pads copyright protection.
`
`
`
`For these reasons, even were the Court to afford some deference to the
`
`Copyright Office’s decision to deny GW’s claim, the Court still would conclude that GW
`
`has crossed the modest threshold of creativity needed to obtain copyright protection.
`
`See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) (“To be sure,
`
` 7
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 8 of 25 PageID #:18880
`
`
`
`the requisite level of creativity is extremely low; even a slight amount will suffice.”). The
`
`Court therefore denies Chapterhouse’s motion for reconsideration.
`
`
`
`
`
`B.
`
`Chapterhouse’s investigation costs
`
`Chapterhouse has asked the Court to award it $1,039.00 in out-of-pocket costs
`
`that it incurred investigating two of GW’s applications to and correspondence with the
`
`Copyright Office as described earlier. In support of its motion, Chapterhouse has
`
`attached as an exhibit an itemized invoice from Peerless Patents, Ltd., a document
`
`retrieval service that Chapterhouse hired to request and obtain the documents from the
`
`Copyright Office. Def.’s Mot. for Recons., Ex. 4. The invoice details the expenses that
`
`Chapterhouse incurred, including: (a) $80 for certified copies of the two “Copyright
`
`Application or Registration Correspondence File[s]”; (b) $50 for a “Rush Processing
`
`Service Fee”; (c) $50 for transportation charges to and from the Copyright Office; (d)
`
`$784 for copyright disbursements or fees, a figure that is broken down into
`
`subcategories; (e) $35 for overnight delivery; and (f) a $40 administrative fee.
`
`
`
`Federal Rule of Civil Procedure 26(e) imposes upon a party who has responded
`
`to a request for production of documents a duty to supplement its response “in a timely
`
`manner” once the party learns that the response is incorrect or incomplete. Fed. R. Civ.
`
`P. 26(e)(1); see also Allen v. Bake-Line Prods., Inc., No. 98 C 1119, 2001 WL 883693,
`
`at *1 (N.D. Ill. Aug. 6, 2001) (“The duty to supplement discovery requests lingers on
`
`without solicitation by the requesting party.”). If a party fails to comply with Rule 26(e)’s
`
`requirements, a court may order payment of reasonable expenses caused by the
`
`failure, unless the failure “was substantially justified or is harmless.” Fed. R. Civ. P.
`
`37(c)(1). “Courts generally have broad discretion in deciding the appropriate sanction
`
` 8
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 9 of 25 PageID #:18881
`
`
`
`for a party’s discovery violation, and the type of sanction administered generally
`
`depends on the unique factual circumstances of the case.” Minuteman Int’l, Inc. v.
`
`Nilfisk-Advance, No. 03 C 223, 2004 WL 2533626, at *3 (N.D. Ill. Sept. 28, 2004)
`
`(internal quotation marks omitted).
`
`
`
`In deciding whether to impose sanctions based on a party’s failure to comply with
`
`the disclosure requirements of Rule 26(a), courts consider: (1) any prejudice or surprise
`
`to the other party, (2) the party’s ability to cure that prejudice, (3) the likelihood of
`
`disruption to the trial, and (4) evidence of bad faith or willfulness involved in not
`
`disclosing the evidence earlier. David v. Caterpillar, Inc., 324 F.3d 851, 857 (7th Cir.
`
`2003); see also Newman v. Metro. Pier & Exposition Auth., 962 F.2d 589, 591 (7th Cir.
`
`1992) (sanctioning court should consider circumstances of failure and be guided by
`
`proportionality).
`
`
`
`Having considered these factors, the Court concludes that GW should pay the
`
`expenses that Chapterhouse incurred in obtaining GW’s correspondence with the
`
`Copyright Office. Beyond the duty to supplement that Rule 26(e) imposes,
`
`Chapterhouse specifically asked GW to supplement its production of correspondence
`
`with the Copyright Office. GW did not do so but instead withheld correspondence that it
`
`knew Chapterhouse had not received, while attempting to contact the Copyright Office
`
`for further clarification. GW’s lead counsel states in an affidavit that after opposing
`
`counsel sent him Chapterhouse’s September 9, 2011 discovery requests, he “noticed
`
`that the Copyright Office had never responded to [his] June 26 email concerning the
`
`application for the Assault Squad Shoulder pad.” Pl.’s Resp. to Def.’s Mot. for Recons.,
`
`Ex. 1 at 4. Rather than disclose the earlier e-mail exchange, however, GW pursued its
`
` 9
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 10 of 25 PageID #:18882
`
`
`
`dealings with the Copyright Office for nearly two more months before disclosing these
`
`communications to Chapterhouse. Even if GW “assumed the matter was resolved”
`
`when it did not receive a response from the Copyright Office in June 2012, it knew
`
`otherwise on November 7, when Robin Jones sent GW’s attorney an e-mail indicating
`
`for a second time that she was rejecting at least part of GW’s application. Id. at 5. And
`
`if GW’s failure was originally due to oversight based on the large number of document
`
`requests that it received from Chapterhouse, it surely was aware on November 2, when
`
`Chapterhouse expressed concern over this particular production request, that
`
`Chapterhouse’s attorneys had not received the correspondence in question from GW.
`
`
`
`GW’s attorney stated, in an affidavit that he filed on January 4, 2013 in response
`
`to Chapterhouse’s earlier motion to reconsider, that at the time in question, the
`
`Copyright Office had not yet addressed the copyrightability of the shoulder pads “in any
`
`substantive way.” Docket entry 270-1 at 1. In his more recent affidavit dated March 13,
`
`2013, which GW’s attorney submitted with GW’s response to Chapterhouse’s second
`
`motion for reconsideration, he again states that as of January 4, he “still had received
`
`no substantive communication from the Copyright Office (only a promise to respond to
`
`my June 26, 2012 email) . . . .” Id. at 1. This statement does not appear to be accurate.
`
`Prior to Carol Frenkel’s January 4 letter denying GW’s application, GW’s attorney
`
`received several e-mails from various Copyright Office personnel, most of which
`
`commented on the copyrightability of the sculptured shoulder pad. Considering the
`
`circumstances, there is a strong indication that GW’s failure to disclose its
`
`correspondence with the Copyright Office was deliberate or at least reckless.
`
` 10
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 11 of 25 PageID #:18883
`
`
`
`
`
`The prejudice to Chapterhouse is evidenced by its filing of the first motion to
`
`reconsider, in which it relied on the contents of the correspondence (Chapterhouse
`
`withdrew the motion in part for reasons not relevant here). Though the motion was
`
`unsuccessful, it was a legitimate and colorable motion, made after Chapterhouse
`
`undertook its own investigation and uncovered documents that GW had an ongoing
`
`responsibility to produce. The Court includes that it is appropriate to shift to GW the
`
`$1,039 in expenses that Chapterhouse incurred as a result of GW’s failure to timely
`
`supplement its document production.
`
`II.
`
`
`
`Chapterhouse’s motion for summary judgment
`
`Chapterhouse has moved for summary judgment on nine products identified in
`
`GW’s claim chart regarding newly accused products (the “new products claim chart”).
`
`Specifically, Chapterhouse contends that the GW products identified in entries 146–48,
`
`151–52, 155–57, and 163 on the new products claim chart are not entitled to protection
`
`under copyright law. The only products that Chapterhouse contends are not
`
`copyrightable in GW’s new claims, however, are various shoulder pads. The Court
`
`addressed Chapterhouse’s arguments in detail in its previous decision and discussed
`
`the copyrightability of the shoulder pads again in addressing Chapterhouse’s motion for
`
`reconsideration. Chapterhouse has not made any additional arguments in support of its
`
`position beyond those that the Court has already considered and rejected. Additionally,
`
`the Court finds that Chapterhouse’s submission of a report by a new expert witness
`
`does not warrant a different conclusion, given the low threshold of creativity needed to
`
`warrant copyright protection. See FASA Corp. v. Playmates Toys, Inc., 912 F. Supp.
`
`1124, 1147 (N.D. Ill. 1996) (evidence of prior similar works does not defeat author’s
`
` 11
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 12 of 25 PageID #:18884
`
`
`
`claim to copyright protection). The Court therefore denies Chapterhouse’s motion for
`
`summary judgment.
`
`III.
`
`GW’s summary judgment motion
`
`
`
`GW contends that it is entitled to partial summary judgment on three points.
`
`First, GW contends that it is entitled to summary judgment regarding the question of its
`
`ownership of the allegedly copied products. Second, GW contends that Chapterhouse
`
`has admitted GW’s prior use of eighty-seven of its claimed trademarks and that as a
`
`result, the Court should find that GW has established this element of trademark
`
`infringement. Finally, GW argues that the Court should strike a number of the
`
`affirmative defenses that Chapterhouse has asserted.
`
`
`
`Summary judgment is proper when “the admissible evidence, construed in favor
`
`of the non-movant, reveals no genuine issue as to any material facts and establishes
`
`that the movant is entitled to judgment as a matter of law.” Berry v. Chi. Transit Auth.,
`
`618 F.3d 688, 690–91 (7th Cir. 2010). A genuine issue of material fact exists if there is
`
`sufficient evidence to allow a reasonable jury to find in favor of the non-movant.
`
`Swearnigen-El v. Cook Cnty. Sheriff’s Dep’t, 602 F.3d 852, 859 (7th Cir. 2010). On a
`
`motion for summary judgment, a court does not weigh evidence or determine the
`
`credibility of any properly considered testimony. Berry, 618 F.3d at 691.
`
`
`
`
`
`A.
`
`GW’s ownership of copyrights
`
`The Copyright Act provides a federal cause of action for “[t]he legal or beneficial
`
`owner of an exclusive right under a copyright . . . .” 17 U.S.C. § 501(b). Ownership of a
`
`valid copyright, therefore, is one of the elements a plaintiff must prove to prevail in a
`
` 12
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 13 of 25 PageID #:18885
`
`
`
`copyright infringement lawsuit. Feist Publ’ns, 499 U.S. at 361; HyperQuest, Inc. v.
`
`N’Site Solutions, Inc., 632 F.3d 377, 385 (7th Cir. 2011).
`
`
`
`In its response to GW’s motion for summary judgment, Chapterhouse concedes
`
`that GW owns the exclusive rights for all but one of the works at issue in the litigation:
`
`an illustration of a fictional “Lightning Claw” weapon. The illustration, created by Nick
`
`Coleman, was included in a 1991 GW book on Warhammer 40,000 (entries 132 and
`
`133 on the new products claim chart). Chapterhouse contended in its motion that GW
`
`has never claimed Coleman as a current or former GW employee and had not produced
`
`a confirmatory assignment documenting a previous assignment of rights in the
`
`illustration. Chapterhouse appeared to agree, however, that a confirmatory assignment
`
`from Coleman would resolve the issue of GW’s ownership of the “Lightning Claw”
`
`illustration in entries 132 and 133. In its reply, GW stated that it did not yet have a
`
`confirmatory assignment but expected to receive one within a matter of days. Pl.’s
`
`Reply, Stevenson Decl. at 2. On March 29, GW filed a confirmatory assignment by
`
`Coleman. See docket entry 330. This document confirms GW’s prior and continuing
`
`ownership of the “Lightning Claw” illustration. GW is entitled to a finding in its favor on
`
`the issue of its ownership of Coleman’s illustration as well as on the issue of its
`
`ownership of copyrights for all of its other products still at issue in this litigation.
`
`
`
`
`
`B.
`
`GW’s prior use of trademarks
`
`GW next contends that Chapterhouse has conceded that GW made prior use in
`
`commerce of all the trademarks at issue in the case. GW relies on deposition testimony
`
`by Nick Villacci, Chapterhouse’s principal owner and designated Rule 30(b)(6) witness,
`
`regarding Chapterhouse’s prior use in commerce of the 107 claimed trademarks.
`
` 13
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 14 of 25 PageID #:18886
`
`
`
`Specifically, GW asked Villacci to look through all of the listed trademarks and identify
`
`any marks for which “you think you created the name or the icon before Games
`
`Workshop . . . .” Pl.’s Reply, Ex. A at 176. Villacci listed a number of items from the list,
`
`and concluded, “[t]hat’s it.” Id., Ex. A at 179. GW argues that aside from the
`
`trademarks that Villacci expressly mentioned,3 Chapterhouse has conceded GW’s prior
`
`use in commerce of the listed trademarks.
`
`
`
`GW’s alleged trademarks include both registered and unregistered trademarks.
`
`See 15 U.S.C. §§ 1114(1) (cause of action for infringement of a registered mark) &
`
`1125(a) (cause of action for infringement of rights in mark acquired by use). Under the
`
`Lanham Act, registration is prima facie evidence of the claimant’s ownership of a valid
`
`trademark. Id. § 1115(a); see Cent. Mfg., Inc. v. Brett, 492 F.3d 876, 881 (7th Cir.
`
`2007); Packman v. Chi. Tribune Co., 267 F.3d 628, 638 (7th Cir. 2001). Chapterhouse
`
`has offered no evidence suggesting that it used any of GW’s registered marks in U.S.
`
`commerce before GW did so. GW is entitled to a finding that as to its registered marks,
`
`this element of its Lanham Act claim has been established.
`
`
`
`By contrast, when a plaintiff claims infringement of an unregistered trademark, it
`
`bears the burden to establish both that the mark is protectable and that the plaintiff has
`
`“engaged in prior use and ownership.” De Beers LV Trademark Ltd. v. DeBeers
`
`Diamond Syndicate Inc., 440 F. Supp. 2d 249, 269 (S.D.N.Y. 2006) (internal quotation
`
`
`3 GW contends that Villacci identified twenty marks for which Chapterhouse contends it has
`seniority of use in U.S. commerce. See Pl.’s Br. at 5 n.4. In fact, Villacci named twenty-five
`marks in response to GW’s question quoted above. The Court notes that Villacci’s testimony is
`not a model of clarity regarding whether he disputes GW’s prior use vis-à-vis Chapterhouse,
`GW’s prior use as against the world, or the absence of any Chapterhouse product bearing the
`mark. Because GW had the opportunity to clarify matters but did not do so, the Court will
`construe any ambiguous testimony as indicating a dispute by Chapterhouse regarding GW’s
`prior use.
`
` 14
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 15 of 25 PageID #:18887
`
`
`
`marks omitted) (citing Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003));
`
`G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 676 F. Supp. 1436, 1466 (E.D. Wis.
`
`1987). Thus GW bears the burden of establishing its prior use vis-à-vis Chapterhouse
`
`of all its claimed unregistered trademarks.
`
`
`
`As the Court noted in its previous summary judgment decision, GW has
`
`produced a detailed spreadsheet containing the names of each product bearing the
`
`marks at issue and listing the annual amount of U.S. sales for the product from 2004
`
`until the present. Chapterhouse did not begin to sell products of any kind until 2008,
`
`four years later. That is sufficient to establish GW’s prior use of the marks. The only
`
`evidence that Chapterhouse has submitted to rebut that evidence is Villacci’s testimony
`
`at his deposition. Chapterhouse argues that GW failed to lay a proper foundation
`
`regarding Villacci’s knowledge of GW’s prior use—he knows only when Chapterhouse
`
`began selling products bearing any of the claimed marks—and that Villacci’s failure to
`
`name other marks does not amount to an admission. Without Villacci’s testimony,
`
`however, Chapterhouse has no evidence that gives rise to a genuine issue of material
`
`fact regarding GW’s seniority of use of the marks. Thus the Court agrees that, except
`
`for the marks for which Villacci disputed GW’s prior use, GW is entitled to a finding that
`
`it has established prior use in commerce. The Court’s finding resolves this issue for all
`
`but twenty-five of the trademarks. 4
`
`
`4 The trademarks for which GW still must establish prior use in commerce are: (1) Blood
`Ravens, (2) Chaplain, (3) Exorcist, (4) Flesh Tearers, (5) Heresy Armour, (6) Horus Heresy, (7)
`Howling Griffons, (8) Jetbike, (9) Jump Pack, (10) Lightning Claw, (11) Mycetic Spore, (12) Soul
`Drinker, (13) Storm Shield, (14) Tervigon, (15) Tyranid Bonesword, (16) Tyranid Lashwhip, (17)
`Ymgarl, (18) Blood Ravens Icon, (19) Celestial Lions Icon, (20) Dark Angels Winged Sword
`Icon, (21) Exorcist Skull Icon, (22) Howling Griffons Icon, (23) Iron Snakes Icon, (24) Chaos
`Space Marines Eight-Pointed Star Icon, and (25) Soul Drinkers Icon.
`
`
` 15
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 16 of 25 PageID #:18888
`
`
`
`
`
`GW also contends that it is entitled to summary judgment on the question of its
`
`ownership of eight of the twenty-five marks at issue, based on a disclaimer that
`
`Chapterhouse has posted on its website.5 Chapterhouse’s disclaimer lists a number of
`
`products and trademarks—among them “Space Marine chapters” and “Space Marine
`
`chapter logos”—that are registered, trademarked, or copyrighted by GW. It then
`
`declares: “Used without permission. No challenge to their status intended. All Rights
`
`Reserved to their respective owners.” See docket entry 213-9 at CHS 30. GW argues
`
`that because these eight marks are Space Marine chapter logos, it is entitled to
`
`summary judgment on the question of its ownership of trademark rights for the marks.
`
`
`
`The Court disagrees. Chapterhouse’s disclaimer concedes that it does not claim
`
`exclusive ownership (or ownership at all) of any marks for Space Marine chapters or
`
`their logos. But the disclaimer does not confer upon GW the exclusive rights to those
`
`marks. See Int’l Kennel Club of Chi. v. Mighty Star, Inc., 846 F.2d 1079, 1085–87 (7th
`
`Cir. 1988) (analyzing protectability of unregistered mark without reference to
`
`defendant’s disclaimer). Chapterhouse’s disclaimer does not mention these eight
`
`products by name, and thus it is not sufficient to establish GW’s ownership of these
`
`eight marks.
`
`
`
`
`
`C.
`
`Chapterhouse’s affirmative defenses
`
`Finally, GW asks the Court to strike twenty-three of the twenty-four affirmative
`
`defenses that Chapterhouse asserted in its answer to GW’s third amended complaint.
`
`In response to GW’s motion for summary judgment, Chapterhouse has withdrawn
`
`thirteen of its asserted defenses, including affirmative defenses 2, 8, 10–17, and 19–21.
`
`5 Specifically, the eight marks include: (1) Blood Ravens Icon, (2) Celestial Lions Icon, (3) Dark
`Angels Winged Sword Icon, (4) Exorcist Skull Icon, (5) Howling Griffons Icon, (6) Iron Snakes
`Icon, (7) Chaos Space Marines Eight-Pointed Star Icon, and (8) Soul Drinkers Icon.
`
` 16
`
`

`
`Case: 1:10-cv-08103 Document #: 333 Filed: 04/01/13 Page 17 of 25 PageID #:18889
`
`
`
`Additionally, Chapterhouse acknowledges (and GW does not dispute in its reply) that
`
`GW is not seeking statutory damages for any of its claims, and thus affirmative
`
`defenses 22 and 23 are moot.
`
`
`
`Chapterhouse concedes that affirmative defenses 5—that any copying was only
`
`de minimis—and 6—that Chapterhouse independently created its products—are not
`
`act