Weapon Licensing issue?

[Squiggers]

My team is working on a full scale game based around the 1980s in Europe, and as such uses several weapons that are around during this period.

A few days ago we received an e-mail from a company calling themselves ActionSportGames - an airsoft company - claiming that we were infringing their trademark via displaying images of these weapons, as we were intending to profit from their use. Apparantly they've got the right to use these weapons in games from several weapon manufacturers, all of which are displayed on their site.

Now, I was under the impression that changing the names of these weapons would be enough - but according to the wording in this e-mail, they have the rights to the designs, name.. the whole lot.

This creates quite a few problems, as you can imagine, particularly for a project based around realism!

Has anyone heard of this happening before with this company, or knows more about licensing laws regarding weaponry/vehicles?

[elmuerte]

Trademarks cover words and logos. Trademarks are also bound to certain product categories. Trademarks are only legally protected in the countries where they are registered. You cannot trademark a weapon/vehicles/etc. design. Trademarks are there to protect the consumer from look-a-like products, and misleading brand-association.

There is also an other thing called copyright. When you design a weapon/vehicle/etc. you automatically gain copyright over explicitly that design. Of course it is quite easy to diverge a bit from the original design in order to avoid copyright violations of the design. It's not a violation of copyright if something looks similar, it has to be exactly the same for that.

From your wording it sounds this company is concern over both trademarks and copyrights they hold. As you said, when you change the names it's not a trademark violation, as you don't use those trademarks. As for the possible copyright concern of that company. Do you have weapons that were modeled exactly after their toys? (it looks like that company also sells toys that look like the real weapons (like the MP5 and M15) and I really doubt they hold the copyright on those designs). If you have weapons modeled after their toys, simply change them a bit so that they only look similar. For the average person they will look alike, but for the law they are not the same.

Of course this company can always start legal actions. That is always possible even though they really have no case at all. This is simply how the legal system works. The best course of action is to be polite and convince them you are not violating their trademarks and copyrights. If they keep persisting it is best to find legal representation.

[ambershee]

I find it very unlikely that a random airsoft company would have purchased such trademarks, and just as unlikely that an arms manufacturer would have sold them to such a company in the first place.

Given that they probably do not own the respective intellectual property, they have absolutely no claim in enforcing how it is used.

The actual owner of those designs could however object, if they so desired. After changing the names, I'd anticipate this is unlikely however (I'd also note, that given that this is supposed to be historically accurate, that I'm not even sure they could object to you using the names and designs anyway, as it likely constitutes a fair usage).

[RandomNinja]

I did some searching, and it does seem like ActionSportGames have gained exclusive rights to distribute replicas of a lot of weapons. I find it strange that this would extend into games though... Especially if you change names etc. Besides, unless ActionSportGames have any big plans on making games any time soon, they gained those licensing rights on a whole different basis (airsoft, not game-use).

That's just them being douchey.

[immortius]

They apparently have exclusive rights to create full-scale replicas of various weapons - at least according to the materials on their website.

It seems unlikely to me this extends to rights over digital recreations. They're not even the intellectual property owners - the companies they have the exclusive licenses with are. But IANAL or anything.

[rebb]

Heh, this makes you wonder if they got those rights to specifically try to go around the mod communities, claiming infringement on all those game mods that use realistic weapons.

[Squiggers]

The e-mail that I received has some rather odd grammatical/spelling errors throughout the piece - this seems particularly odd, as its not sent via their legal team, but via their "Director of US Operations & Global Licensing". That said, their legal team is based in Denmark, so that may explain some of the odd spelling.

In regards to what they're claiming, here are some of the extracts from the e-mail:

Our company is the exclusive worldwide Licensees and rightful owner of the registered trademark of Concern Izhmash Dragunov SVD, SVDS, CZ-Scorpion Vz. 61, Franchi SPAS-12, and Accuracy-L96 plus many others with regard to trademarks, trade names, logo, product designs, use of photos, and video games with Licensors firearms, components and accessories.

If anyone wishes to see the full e-mail, please ask - I'm a little bit concerned about making the entire e-mail completely public in case it compromises any legal case that we may end up having as a result of the situation, unless someone can say other wise in regards to that?

On a side note - you can find the certificates on their site if you go to Company -> Exclusive Rights and then scroll down to each invidual company. For a few examples:

http://www.smartstep.se/ssp/uplimages/68509/0.jpg
http://www.smartstep.se/ssp/uplimages/21956/0.jpg
http://www.smartstep.se/ssp/uplimages/21959/0.jpg
http://www.smartstep.se/ssp/uplimages/21960/0.jpg

The issue that I have is that these documents aren't too.. well, clear on what they're after. Mainly the fact that the rights to certain items are rather vauge - or are vauge to the point that they can be applied in several areas.

elmuerte - all weapons that we've used, we've based off the proper weapons, not any of their creations.I'm under the impression that they're claiming its violation of their IP ownership, although some of the certificates don't give them the right for games, such as the Armalite document.

Its highly likely that i'll have to get some legal representation - at present i'm asking around for IP/Copyright/Trademark knowledgable lawyers to be able to look over it, that aren't going to bleed me dry to even examine what they've said.

ambershee - I'm not so sure on whether they actually DO have the authority to do this in all honesty. They seem to have been granted the rights, but with the original company being able to overule them (as far as i understand the wording of the documents) in regards to situations such as this, but I can't be sure.

I've got doubts on the fair use argument, as we were intending to sell the project, and they argue that we'd be profiting from the use of these weapons, effectively. Oh, and they also are ordering us to remove the "photos" of these weapons from ModDB and anywhere else that is displaying them.

[Naike]

maybe their just trollin, ask for proof.

[taz1004]

You can't make decisions like these based on speculations. I say you need to talk to a lawyer. Also ask them what it would take to acquire the license.

[Squiggers]

maybe their just trollin, ask for proof.

I'd say they're using the images of the documents that I linked to in my post as their proof.

It might be plausible to contact the individual companies to find out more, but i'd rather wait until I had proper legal advice.

[taz1004]

Also, don't go too defensive or hostile towards them from the beginning. Sometimes, you can work out a deal that benefits both party with some politics. Perhaps offering endorsements in your game.

[JeepRubi]

I somehow doubt that they can get on your case all that much about using those weapons in a game. On that list is the spas12, and that gun has been featured in numerous retail games (hl2, mw2, bad company 2 to name a few) and im fairly confident that all of the developers of those games didn't go and seek permission to use it.

My guess is that they're picking on a small indie project because they assume you can't afford decent legal representation, whereas a larger developer could. (And they probably know they don't have a very strong case.)

[schizoslayer]

I've worked on a AAA game where we used real-life weapons and all we had to do was change their names (Although I don't think their names ever appeared in the game but we changed them anyway).

I'd say they are picking on you because they think you can't defend yourself.

[Naike]

I've worked on a AAA game where we used real-life weapons and all we had to do was change their names (Although I don't think their names ever appeared in the game but we changed them anyway).

I'd say they are picking on you because they think you can't defend yourself.

This is what I meant by trolling.

[ambershee]

On a side note - you can find the certificates on their site if you go to Company -> Exclusive Rights and then scroll down to each invidual company.

This makes more sense, they have exclusive contract agreements regarding the use of various objects, and they're going to enforce it even if they have no actual commercial interest in video games.

What you're seeing is a common business '**** move', whereby something like a patent is filed with the sole interest of preventing anyone else from doing anything without their permission - in this case securing intellectual property rights from arms manufacturers for use in their business, but also in other business sectors where they have no interest, and likely never will.

It's a way of making a tidy profit without ever having to actually do anything; they're going to try and extract royalties from you.

There's probably not much point getting a lawyer involved at present - they've got you.