"Question Regarding IP..." Topic

I have several one-piece injection-moulded models, which are no longer in production. They were manufactured by one company under licence from another company. The manufacturers went into administration, but prior to this had their licence terminated by the second company. The second company, who are still in existence, no longer hold any stock of these models and I have been informed that the molds have been destroyed.

So, as intellectual property rights are a tricksy subject, if I were to use the existing models I have to create new molds, effectively re-creating this line of models, would I be infringing on the intellectual property rights of the company who granted the licence, given that the subject matter is public domain? Or would it be just the intellectual property rights of the original sculptor?

Any help on this subject would be appreciated.

Donning my lawyer's hat, it partly depends on what is in the original agreement between the sculptor and the second company (as the sculptor may have retained the IP), but if we assume that the second company owned the IP originally then they still own it and you would be infringing it if you created the moulds from the models you own. It doesn't matter that the subject matter is public domain, it is the IP in the models in question that is important.

(Another complication is that we don't know the terms of the original licence to the company that went bust, as it may have been an exclusive and irrevocable one that the second company had no right to terminate, although the subsequent administration event would usually (but not always) extinguish the licence.)

If the second company is still in existence then you can see if they'll grant you a licence to create the moulds – they may be happy to do so if there is no cost to them (but they might want a royalty/one off licence fee though).

This is based on English law but the core principles are consistent in every vaguely sensible jurisdiction.

The dangerous thing is to assume that out of production is the same as right to produce.

Whilst the source may be public domain the models belong to someone, and it seems likely that you will be infringing upon that persons rights to protection. if you wanted to produce a range of figures (or whatever ) you need to produce entirely new figures, by hiring sculptors, or contacting the rights holders and negotiating the rights with them.

So for sake of academic argument is it possible for a sculpture/cast/model to ever pass into the public domain like other creative work can?

Yes, if it was not actually covered by copyright (unlikely in the above scenario), once the intellectual property rights have expired (varies by country, but you could be looking at 50 or 70 years beyond the death of the author/creator) or if it is donated to the public domain (in other words the author/creator surrenders his rights – again, unlikely in the above scenario).

Under English law, I'd say yes: (i) if the IP owner expressly permits it; or (ii) on the expiry of 70 years following death of the original sculptor.

(I'm at the limit of my comfort zone there – IP isn't my specialism, I just have a working knowledge from dealing with it in commercial contracts.)

IP where multiple creators are involved was a topic of my law masters.

*shudder* too much blackletter law in that topic for my liking :)

Funny, I always found the high degree of creativity to be the appealing factor!

But you are right, as with many things, it comes down to "it depends what it says in the contract"

Carrion Crow, you don't have the right to do anything, except to use your "models" in the way they were intended. Assemble, paint, play with etc.

To even ask if you have the right to take steps to manufacture them takes breath taking gall.
Out of production? So what?
The producer had his rights terminated? Even more irrelevant. Obviously the owners of the rights cared enough to take them back. The ONLY party that has a right to make new molds is … not you.

You are so far out of the loop on this that the question is laughable.

If the company that made the things in the first place lost the right to produce them…

Actually , they (or a subsequent purchaser of the rights) are the only ones with the right to make them. Even the company that licensed them doesn't have that right, unless the contract said they do.

Basically, one company owns the rights to the subject matter, the other company owns the rights to the models, and the only way to legally get them back in production by you would be if both companies told you that you could.

Generally one individual or company owns them and licences another to produce.

Scenario 1. Production company closes down. Any stock they had produced would fall into their liquidation as an asset. The licence would cease and ownership would remain with the owner, who could choose to (a) do nothing with them, (b) produce them himself or (c) find a new producer (or just sell them entirely with rights to produce of course)

Scenario 2. The original owner company closes down. If IP was with the company it would become an asset under the liquidation. The production company would need to seek a new contract to produce with whoever acquires the rights to the original masters. It would not be able to continue to produce just because it holds the moulds. However those moulds would belong to the production company so the new owner of the IP would need to start again… See above

I doubt you would need permission from both companies, unless your intention was to try and get hold of the production moulds, which they are unlikely to give you.

Thanks to all who provided useful help and advice. As I'm not an expert on these matters, I thought there might be people on here who may have had experience of these things.

So, if I bought the IP rights from the company (or individual) that owns them, then I would have the rights to do whatever I wanted with the original models, as I would then be the owner of the IP, correct?

From a $$$ standpoint, it would be cheaper for you to just go out and find & buy the extra minis you need than to try and make them yourself.
If you are intending to sell mass quantities commercially, then license or buy the IP rights.

CC – yes, if you buy the rights outright or get a license that lets you do so.

Have a good IP lawyer, yours not theirs, draw up the contract.

As MB says, IP can be transferred (or assigned). Make sure that you are assigned the full rights and not just some limited production licence, but if the IP has been assigned to you then it is now you who has the right to control them. That includes the right to put them into production, or indeed the right to NOT put them into production.

However a common mistake that people make is assuming that because the IP holder is not producing them (whether they have indicated they may intend to on the future or never intend to ever again) then they have the right to do so "because they are not in production so it isn't costing the IP owner anything"

As Geoff says – and the cost may be caused by several things – future sales if the owner starts up production, loss of value of the product if the owner wants to sell the range, or even possibly loss of sales for a current range that superseded them.

If you parked your car on the drive and left it for a couple of months, you wouldn't be very happy if someone drove of in it claiming 'well, it doesn't cost you anything because you're not using it' – it's really a variation of the same thing.

Thanks all. Your expertise and explanations have been invaluable. You've clarified some grey areas I had regarding IP and left me with a greater understanding of this matter.

Just to muddy the waters even further, 70 years after the life of the author is the copyright for media. Miniatures are arguably industrial design, which has a different (generally more lenient) set of parameters.

they'd fall under artistic (70yrs) as miniature sculptures. industrial design is slightly different.

but it may be an interesting argument for our kids/grandkids to run when the original games workshop/rogue trooper sculpts come up to expiry :)

Out of interest, with a model of a vehicle how do you prove it is a copy. Figures yes I can see lots of things that are individual. But a vehicle must be harder to prove?

Not thinking about doing it just wonder how you prove it.

This is partly why IP claims are so expensive – its often a case of a direct physical comparison and 'balance of probability' that it is more than less likely the same.

Thanks Geoff, is that why all manufacturers seem to have slightly different sizes?

Id say there are four primary factors in that.

1. Try researching in depth and you will find considerable difference in the data that is available. Given dimensions and plans do vary, is that height to top to the turret, cupola or that little sight block? Is the length the hull or gun forward? Are those mudguards included? Why do these two plans not match up? Is that a production vehicle, or a prototype? Its not unusual to end up going with the set that seems most common (but bear in mind that, especially on the Internet, very often sites take data from each other, so one mistake can be promulgated quite widely, and then taken as 'true' on the basis of frequency)

2. Sculptor style can vary, models are built by humans (even 3D ones) and are only as good as your cutting tolerance. Half a mm here or there, the width of a knife blade or the thickness of the sheet of plastic can cause a model to come out with slightly different tolerances or proportions. Similarly when sculpting figures in green stuff, magisculpt or milliput an individual style can cause variation in size, as each model is uniquely hand made.

3. The smaller the scale the harder it can be to maintain a constant size. Consider a basic infantry range as having, perhaps, 40-50 individual poses. The use of regular dollies can improve the overall dimensional size, but generally every arm, hand, pack and pouch has been individually hand applied… You try making 60 pouches that are identical in both look And size.

Then there is the ability to cast it. We generally stay with near to true scale for our guns, for example, but this means that our rifles are thin, our RPGs don't look like tree trunks and our 100mm tank guns don't look like 300mm cannons! (remember, 100mm in 1/100 scale is only 1mm… An RPG-7 launcher is only 40mm (0.4mm!!) in diameter with a 70mm (0.7mm!!!) diameter warhead, not something as big as your head)…

However the thinner you make something, the harder it can be to cast so some manufacturers will deliberately make things artificially thicker so that they are easier to cast, and as a conscious design choice to make them more durable in the hands of wargamers.

4. You need to consider how your lovely model gets from the sculpting stage to the sellable stage. Essentially, it is first moulded in rubber, then cast in molten metal or liquid resin. All of these have a certain degree of give and involve heat. This process can cause degrees of shrinkage, which is not entirely predictable. It also often occurs differently in different planes (I.e. It is not constant between horizontal and vertical) and can vary depending on the heat and pressure used. The thicker an area, the slower it cools and that causes variation in shrinkage compared to thinner areas.

3D printing does not eliminate much of this. It still depends on the reference used, the skill of the 3D sculptor and the actual moulding process. In fact it at introduce additional errors, as the current tolerance of 3D printing (unless you want to pay £300.00 GBP+ for a master print) means that it will have print lines to some degree. To get rid of those you need to either sand them off (mKing it smaller) or skim them (making it thicker)

Plastics are the same. The production tolerances are improved due to the use of large engraved steel casting dies, but those are like £20.00 GBPk each. We have seen much cheaper tool dies lately, but the material is much softer and the production life is considerably reduced.

So when you look at all that, it's remRkable when two things are actually the same. In fact it can even be suspicious and has been used in the past to identify breaches of copyright.