Harmony Gold suing Tatsunoko

[hachi]

I'm hoping Bandai gets the licenses as they have more money.

[Gerli]

Anyone has the context for this pic? Because in that paragraph "fan-made" or "fan-film" is not even mentioned

[Seto Kaiba]

2 hours ago, Gerli said:

Anyone has the context for this pic? Because in that paragraph "fan-made" or "fan-film" is not even mentioned

You mean context about the document itself, or the mentioned project?

[Gerli]

17 minutes ago, Seto Kaiba said:

You mean context about the document itself, or the mentioned project?

I mean who is declaring that, what side of the litigation

[Seto Kaiba]

1 hour ago, Gerli said:

I mean who is declaring that, what side of the litigation

Safe bet it's Harmony Gold.

After all, Catalyst and Piranha submitted that motion to dismiss alleging that Harmony Gold didn't have the rights under license that it claimed to and thus didn't have the standing to bring the suit against them and this is arguing the opposite.  I suppose I can't definitively rule out that they might be so stupid they'd refute the entire premise of their own motion to dismiss though, in light of the fact that they keep getting caught trying to commit precisely the same crime over and over again like they're an even less competent Team Rocket.

Edited April 17, 2018 by Seto Kaiba
Clarity!

[Gerli]

You're right, it makes sense.

[azrael]

It helps to post the whole document as opposed to little snippets that people cut out as it fills the context. Not to mention they keep typing "Harmony Gold", "Tatsunoko" or "Big West" which while isn't wrong, is unusual with regards to legal briefs.

[Einherjar]

On 4/17/2018 at 9:29 AM, Gerli said:

Anyone has the context for this pic? Because in that paragraph "fan-made" or "fan-film" is not even mentioned

Didn’t those people became essentially window dressing for the Academy Kickstarter after they were shut down?

[Gerli]

11 minutes ago, Einherjar said:

Didn’t those people became essentially window dressing for the Academy Kickstarter after they were shut down?

They reporpouse some of the takes and are making an original work called Ocassus.

 

Edited April 19, 2018 by Gerli

[Einherjar]

I thought I remember a couple of people from that project were flown to one of HG’s Comic-Con panels that year and promoted as working on Academy despite the fallout.

[Seto Kaiba]

2 hours ago, Gerli said:

They reporpouse some of the takes and are making an original work called Ocassus.

Yeah, the Robotech fan film group from (IIRC) Serbia that got hit with a cease and desist before they did went the same route... ditch the Robotech IP and repurpose the original aspects of their existing work as the starting point for an original science fiction series.

Mind you, those two groups got their projects nuked for very different reasons.  UEG Productions' fan film Robotech Genesis got slapped with a cease and desist when they refused to surrender all rights to their work to HG in exchange for the fan film being exhibited on robotech.com.  HG has asserted, in documents provided for the lawsuit between them and CGL/PGI that they shut down that Valkyrie Project fan series under orders from Big West (via Tatsunoko)... though, if true, the decision was probably motivated by HG having publicly endorsed the fan film.

 

1 hour ago, Einherjar said:

I thought I remember a couple of people from that project were flown to one of HG’s Comic-Con panels that year and promoted as working on Academy despite the fallout.

Hiring the Valkyrie Project guys was a desperate face-saving move, since HG had previously given that fan film their blessing and then shut it down.  Doubly so since the rumor at the time was that Harmony Gold was shutting down these fan film projects because they were angry that those fans were creating higher quality material than they were.

[Dynaman]

> Harmony Gold was shutting down these fan film projects because they were angry that those fans were creating higher quality material

can be simplified to

> Harmony Gold was shutting down these fan film projects because they were angry that those fans were creating  material

[JB0]

> Harmony Gold was shutting down these fan film projects because they were angry that those fans were making them look incompetent.

[RavenHawk]

On 4/17/2018 at 9:29 AM, Gerli said:

Anyone has the context for this pic? Because in that paragraph "fan-made" or "fan-film" is not even mentioned

I agree with other posters that it is most likely counsel for Harmony Gold that wrote this, as attempting to strengthen their arguments by stating that Tatsunoko and Big West have, through their relationship with and requests of HG, been treating them as having the very rights that they are attempting to persuade the court that they have.

As for the general writing style (not typical of an experienced litigator submitting briefs, claims, or counterclaims)... well, from what I've read of the actual documents from the case, there are a lot of things that strike me as sub par.

[RavenHawk]

On 4/5/2018 at 9:50 PM, TehPW said:

https://bg.battletech.com/forums/index.php?topic=60546.450;topicseen#lastPost  Is this true? March 21, 2021, HG losses ALL of the various TM's they have involving RT?

Just catching up on this thread after not looking at it for... well, months.

The arbitration ruling includes trademarks, but trademarks as based upon usage, so that can potentially get a little fuzzy.

It's late, so I don't recall right now what was available in the USA before HG got the license. Some Macross material, I believe, but don't think anything else. Assuming Macross material was available, and HG licenses the rights to it, and then themselves trademarked the names and logos, then I think there is a strong argument that those trademark rights revert to the original owner... or, at least, the rights to use them revert, based on the agreement, and thus those trademarks could be canceled.

Now, for argument's sake, if HG was the first to use those marks in commerce (as seems likely with at least some of their materials), then HG would have an argument to continue owning and using the marks. They might keep the words, but they would likely lose the ability to use any logos or stylized marks based on infringing on copyright ownership of those artistic elements.

In my tired brain, there are arguments for both, so if the license isn't renewed then I suspect we'll see a return to court (and likely not arbitration this time, since arbitration would only be required by the then-expired agreement).

[TheLoneWolf]

12 hours ago, RavenHawk said:

Just catching up on this thread after not looking at it for... well, months.

The arbitration ruling includes trademarks, but trademarks as based upon usage, so that can potentially get a little fuzzy.

It's late, so I don't recall right now what was available in the USA before HG got the license. Some Macross material, I believe, but don't think anything else. Assuming Macross material was available, and HG licenses the rights to it, and then themselves trademarked the names and logos, then I think there is a strong argument that those trademark rights revert to the original owner... or, at least, the rights to use them revert, based on the agreement, and thus those trademarks could be canceled.

Now, for argument's sake, if HG was the first to use those marks in commerce (as seems likely with at least some of their materials), then HG would have an argument to continue owning and using the marks. They might keep the words, but they would likely lose the ability to use any logos or stylized marks based on infringing on copyright ownership of those artistic elements.

In my tired brain, there are arguments for both, so if the license isn't renewed then I suspect we'll see a return to court (and likely not arbitration this time, since arbitration would only be required by the then-expired agreement).

Back in 1984, Big West did license out at least one Macross branded piece of merchandise in the USA, but they appeared to have stopped after DYRL was released (most likely because DYRL was originally supposed to be the franchise's swan song). Since they stopped licensing out any more Macross products, nor contested Harmony Gold's subsequent usage of the Macross mark, they've lost all claims to the trademark.

If Harmony Gold and Tatsunoko Production fail to renew their contract, then Harmony Gold will be required to assign the Macross trademark to Tatsunoko, as per the arbitrator's order. Even though Big West was the first party to release a Macross product in the USA, trademark common law gives priority to "continued use" over "first to market". When a trademark is assigned to another party, it doesn't lose any of the strength (ie: continued use) that it's accumulated over the years. In other words, the assignment process won't leave an opening for Big West to try to claim the trademark.

On 4/19/2018 at 1:22 PM, Gerli said:

They reporpouse some of the takes and are making an original work called Ocassus.

 

This isn't related to RavenHawk's question, but damn, there's finally a Youtuber who actually gets it! Thanks for posting this video!

[HardlyNever]

1 hour ago, TheLoneWolf said:

This isn't related to RavenHawk's question, but damn, there's finally a Youtuber who actually gets it! Thanks for posting this video!

I think props really need to go the Piranha Games/HBS lawyer(s) for finally realizing Tatsunoko never had the rights to license what it claims to have licensed to Harmony Gold.

If this judgement actually goes in PG/HBS' favor, specifically off the back of that argument, then this would be a huge blow to HG's claim on anything Macross, upheld in a US court.

[Sanity is Optional]

2 hours ago, TheLoneWolf said:

If Harmony Gold and Tatsunoko Production fail to renew their contract, then Harmony Gold will be required to assign the Macross trademark to Tatsunoko, as per the arbitrator's order. Even though Big West was the first party to release a Macross product in the USA, trademark common law gives priority to "continued use" over "first to market". When a trademark is assigned to another party, it doesn't lose any of the strength (ie: continued use) that it's accumulated over the years. In other words, the assignment process won't leave an opening for Big West to try to claim the trademark.

A thought, if this reverts to a Tatsunoko/Big West issue, as they're both Japanese companies and it's been settled in Japanese courts, do you think Tatsunoko would have to give the US trademark to Big West due to the Japanese case?

[Seto Kaiba]

50 minutes ago, HardlyNever said:

I think props really need to go the Piranha Games/HBS lawyer(s) for finally realizing Tatsunoko never had the rights to license what it claims to have licensed to Harmony Gold.

Giving them props would be premature.  That motion to dismiss was a Hail Mary that not only didn't pan out, but actually backfired rather badly by putting HG in a position to request and provide more documentation from Big West and Tatsunoko proving their rights under license.  (Amusingly, from the statement from Tatsunoko, both they and Big West are in HG's corner on this one, since HG is essentially compelled to defend the Macross IP in court on their behalf under their license.)

 

4 minutes ago, Sanity is Optional said:

A thought, if this reverts to a Tatsunoko/Big West issue, as they're both Japanese companies and it's been settled in Japanese courts, do you think Tatsunoko would have to give the US trademark to Big West due to the Japanese case?

I don't believe so.  Tatsunoko owns the international distribution and merchandising rights for the original SDF Macross series, and the trademark is filed in a region where Tatsunoko's rights make them the sole entity able to commercially exploit the series.

[Sanity is Optional]

3 minutes ago, Seto Kaiba said:

I don't believe so.  Tatsunoko owns the international distribution and merchandising rights for the original SDF Macross series, and the trademark is filed in a region where Tatsunoko's rights make them the sole entity able to commercially exploit the series.

But wasn't the Japanese court's decision that Tatsunoko never owned any rights to the mecha designs to begin with?

[Seto Kaiba]

15 minutes ago, Sanity is Optional said:

But wasn't the Japanese court's decision that Tatsunoko never owned any rights to the mecha designs to begin with?

Not as such, no.

Big West and Tatsunoko's copyright confirmation filings in the Japanese courts in the early 2000s ended with essentially zero changes in the disposition of rights to the original Macross series.  To keep things simple:

Big West and Studio Nue own the intellectual property of the original Macross TV series, and as such are the only ones who can use or authorize the use of that intellectual property in new works (e.g. sequels).  

Tatsunoko Production owns the production materials from the animation production which they bankrolled, and the rights that were given to them under contract as payment for bankrolling that production process.  In short, Tatsunoko owns the copyright on the actual footage itself (but NOT the IP it contains), and the international distribution and merchandising rights to the series which were given to them as compensation for funding the animation production.  Those rights are the ones Tatsunoko licensed to Harmony Gold USA in 1984.

 

 

Put simply, Tatsunoko does not OWN the mechanical designs of the original Macross series, and they're not able to authorize anyone to use the designs in new film works... but they DO own the exclusive right to use those designs in merchandise outside of Japan.  Along with their exclusive right to distribute the series outside Japan, what they have is essentially a proper subset of the copyright rights to the series.

That's the basis on which Harmony Gold is bringing this lawsuit against Catalyst and Piranha.  It's alleging that the designs named in the lawsuit are derivative of those in Super Dimension Fortress Macross, and that as such those designs violate their exclusive right (under license) to exploit the mechanical designs of Super Dimension Fortress Macross in merchandise in the west.

[Gerli]

On 25/4/2018 at 5:20 PM, Seto Kaiba said:

 

Big West and Studio Nue own the intellectual property of the original Macross TV series, and as such are the only ones who can use or authorize the use of that intellectual property in new works (e.g. sequels).  

 

But what about Derivative works? Like Fanfics and Fanfilms? Do Tatsunoko or HG have something to do with that?

[Seto Kaiba]

1 hour ago, Gerli said:

But what about Derivative works? Like Fanfics and Fanfilms? Do Tatsunoko or HG have something to do with that?

Well, as far as derivative works go, 17 U.S.C. § 103(b) and foreign equivalents are in full force.  

Like Harmony Gold was so efficiently reminded in their arbitration with Tatsunoko, the copyright on a derivative work only extends to new material contributed by the author(s) of that derivative work.  It doesn't confer any rights to the original work.  Harmony Gold seems to have been operating under a bizarre belief that having used MOSPEADA designs in several derivative works constituted permission to use those designs indefinitely even after the license lapsed.  Once the license lapses, those works simply become unsellable... HG can't commercially exploit works that contain intellectual property it doesn't hold the rights to.  Since they don't own the IP of Macross, Tatsunoko can authorize some forms of derivative work (e.g. translation/dubbing of the existing footage) but it couldn't create new animation based on that IP or authorize anyone else to.

Fanfics and fanfilms... well... that's down to the individual discretion of the owner(s) of the IP and any relevant licensees.  Creators in the anime and manga industry seem to be pretty OK with it on average, or at least resigned to the inevitability of it if they aren't.  Western IP owners/holders are noticeably more strict and inclined to shut down fan projects if they feel the integrity of their work was threatened, like the famous Star Trek: Axanar fan film case.  Harmony Gold has alleged in the lawsuit with PGI and CGL that at least some of their efforts to shut down fan projects were on the orders/insistence of Big West [and/via] Tatsunoko (specifically, Robotech: Valkyrie Project, which made extensive use of Macross designs).  Other instances of them shutting down fanworks were reportedly motivated solely by HG's individual discretion (e.g. Robotech: Genesis, a fanfilm based on the HG-created backstory of Zor using Southern Cross and MOSPEADA designs.)

[Gerli]

So let's pretend I make a Fanfilm or an animated short about... let say Macross Zero, and I use the UNSpacy logo and the SDF-1... can tatsiunoko or HG shutdown my project? Even if the derivative work are based on IP that's is not licensed by them?

[Chronocidal]

3 minutes ago, Gerli said:

So let's pretend I make a Fanfilm or an animated short about... let say Macross Zero, and I use the UNSpacy logo and the SDF-1... can tatsiunoko or HG shutdown my project? Even if the derivative work are based on IP that's is not licensed by them?

I want to say, legally, probably not.  But unless you have a law degree to defend yourself in court with, I don't think that's going to stop them.

[azrael]

1 hour ago, Gerli said:

So let's pretend I make a Fanfilm or an animated short about... let say Macross Zero, and I use the UNSpacy logo and the SDF-1... can tatsiunoko or HG shutdown my project? Even if the derivative work are based on IP that's is not licensed by them?

HG has a trademark on the UN Spacy logo. That would be an instant shutdown.

[Gerli]

34 minutes ago, azrael said:

HG has a trademark on the UN Spacy logo. That would be an instant shutdown.

That trademark is only for merchandising, right? So anything outside that it's fair use?

[TehPW]

1 hour ago, Gerli said:

That trademark is only for merchandising, right? So anything outside that it's fair use?

Doesn't matter (to them). fandom is full of ants. The owners don't always care about the ants but once they take notice, it's a can of RAID for fandom. A better example was how Disney vs that overseas school (with classic Disney imagery, painted on the side of the school) went down...

[dizman]

1 hour ago, Gerli said:

That trademark is only for merchandising, right? So anything outside that it's fair use?

For better or worse the way most rightsholders look at fan projects is as competitive merchandise. You are making something that people want and offering it for free therefore you are taking away from their profits.

An example would be Nintendo and the Metroid series, a dedicated fan released AM2R (which was a great remake of Metroid 2) at a time when Nintendo was staying silent about the franchise. Soon after Nintendo issued him a DMCA, then a year later released their remake of Metroid 2 with Samus Returns.

[Seto Kaiba]

3 hours ago, Gerli said:

So let's pretend I make a Fanfilm or an animated short about... let say Macross Zero, and I use the UNSpacy logo and the SDF-1... can tatsiunoko or HG shutdown my project? Even if the derivative work are based on IP that's is not licensed by them?

Yes, they could... because Harmony Gold has trademarked the UN Forces roundel from the original Macross series.

They've also trademarked the word "Macross", which would theoretically let them go after anything that used it... even fanworks based on shows they don't have rights to.

 

1 hour ago, Gerli said:

That trademark is only for merchandising, right? So anything outside that it's fair use?

No, trademarks apply to pretty much any form of use... their are protected uses under fair use doctrines like parody and informative purposes, but projects like fan art and fan films are a much greyer area that frequently is dependent on the goodwill of the owner or licensee of the IP.  

If Harmony Gold's claim is true, what motivated the decision to shutdown Robotech: Valkyrie Project was likely that HG itself had endorsed the fan film project... Big West presumably not being about to let HG do an end run around their copyrights by saying it was only a fan film they were supporing.

[JB0]

7 minutes ago, dizman said:

For better or worse the way most rightsholders look at fan projects is as competitive merchandise. You are making something that people want and offering it for free therefore you are taking away from their profits.

An example would be Nintendo and the Metroid series, a dedicated fan released AM2R (which was a great remake of Metroid 2) at a time when Nintendo was staying silent about the franchise. Soon after Nintendo issued him a DMCA, then a year later released their remake of Metroid 2 with Samus Returns.

Also, my understanding is that legally, a trademark owner can't selectively ignore infringing use. They have to threaten everyone or risk losing the mark. That results in a lot of C&D notices companies don't really care about.

In practice, this usually means they ignore fanworks until they get attention in the mainstream press. Below that threshold they can credibly claim they simply didn't know their trademark was being misused.

 

(Also, AM2R was a terrible remake in that it missed the entire point of the original work, but that's neither here nor there. It was leagues better than Samus Returns, though. And I think the DMCA thing was actually a confused lawyer, because a DMCA takedown request is for flat-out piracy, not trademark infringement.)

[Gerli]

21 minutes ago, Seto Kaiba said:

Yes, they could... because Harmony Gold has trademarked the UN Forces roundel from the original Macross series.

They've also trademarked the word "Macross", which would theoretically let them go after anything that used it... even fanworks based on shows they don't have rights to.

 

Can the original (Also rightful) creators and BigWest dispute that trademark if they want to sell the rest of the series in America? (Or licensed to a third party) It's posible?

All those copyrights without being the creator seems a little unfair to me....

[Seto Kaiba]

34 minutes ago, Gerli said:

Can the original (Also rightful) creators and BigWest dispute that trademark if they want to sell the rest of the series in America? (Or licensed to a third party) It's posible?

To dispute the trademarks in the US would require Big West to have a pre-existing presence distributing Macross shows and goods in the US.  They don't have that, so no... Big West would not be able to challenge those trademarks.  They would have to wait for the trademarks to expire and register their own.

 

34 minutes ago, Gerli said:

All those copyrights without being the creator seems a little unfair to me....

Trademarks are not copyrights.

Copyrights are ownership of a work, trademarks are an exclusive right to use a symbol, logo, term, etc. for commercial purposes.

 

US trademark law is stupid like that, since it gives preferential treatment to the party that first used the mark commercially in the US, rather than the actual creator of the thing.

[Gerli]

Thanks Seto, your explanations are always welcome

[M'Kyuun]

I concur; it's nice to have someone knowledgeable concerning legalese who can explain it to those of us, such as myself, who know little or nothing about such matters. Your explanations of both the situation between the various companies involved, as well as legal terms and meanings, is most appreciated, Seto Kaiba.

With the situation between HG and Tatsunoko likely strained, it's hard not to get hopes up that they'll finally lose their iron grip on Macross  outside of Japan. Couple more years until the moment of truth.