Etsy Store listings taken down

[stunthamster]

Hi folks;

I've stumbled across this forum and it looks like a wealth of knowledge folk. I'm hoping I might be able to get some advice on an issue I'm facing.

I run an online store with both a 'traditional' web store and an Etsy presence. We sell miniatures and accessories for wargaming and role-play; most of it is printed under license from independent designers, with some of our own original work. Most of the products are designed to be used in popular gaming systems such as Warhammer 40,000 by Games Workshop or other major gaming systems such as Dungeons and Dragons.

Some of the models are reminiscent of game workshop figures, but are very much original works; I'm very familiar with the space, and keep up to date with Games Workshops products and copyrighted terms. We are paranoid about avoiding any mention of potentially conflicting terms (Even ones such as 'Space Marine' which has been found to be non copyrightable), and we don't list anything that has iconography that could be considered unique to Games Workshop, or are closely similar in design. If anything, we're overly paranoid, but I prefer to stay on the right side of the line.

On Etsy I've just 12 of my listings removed due to a copyright claims from Games workshop. These have been presented in an incredibly vague manner; as proof they've simply pointed at their own product pages, essentially saying that the listings infringe on either one of, or all of the many hundreds of products in those links. In addition, they are claiming that a single model violates copyright across multiple 'genres' (For simplicity one model is claimed to a copyright infringement of a sci-fi medieval knight, sci-fi elf and bloody great sci-fi robot all at once. For those not familiar with the space, these are all very differently thematically and in design language).

Given the utter vagueness of the claim, I feel that this is an automated system that is crawling listings opportunistically, and given the nebulous 'proof' I don't even know where to begin drafting a counter-claim. I'm also vague as to the process on how to do so.

Any advice from folks on the approach to take would be very gladly received. None of the listings were major sellers (Indeed, many of them had no sales), but I don't like the scatter shot nature of the claims. I am entirely happy to comply with a detailed and fair claim, but not with a 'drive by' cease and desist.

Cheers;

Mike

[AndyJ]

Hi Mike and welcome,

You don't say where you are based so I will assume that you are in the UK. But even if you are based somewhere else, much the same principles apply.

To file a counter-claim follow Etsy's guidance here. Don't worry about the references to US law etc. Since Etsy is a US company they prefer to operate under US law, including for their subsidiaries such as in the UK.

Games manufacturers are renown for being aggressive and over-reaching when it comes to protecting their intellectual property, and I think you are right that you have been targeted by an automated system with little or no human intervention. Unfortunately the DMCA is woefully weak in preventing such speculative takedowns. But on the plus side, if you file a counter takedown notice Etsy should reinstate your account. Sadly based on the experience of some other members here, I'm not sure that is always the case however.

Good luck.

[stunthamster]

Hi Andy; many thanks for taking the time to reply, and we are indeed UK based.

Sadly it looks like the attached link isn't quite correct - submitting to it simply nets you a polite response:

Hello,

Thank you for submitting a copyright counter notice. In accordance with Etsy's Intellectual Property Policy, Etsy accepts counter notices for alleged copyright infringement claims for US-based copyright reports in compliance with the DMCA. Based on the report of alleged infringement, we’re unable to process your counter notice. You may consider trying to work things out with the other party directly or reaching out to an attorney with any questions.

It seems that Etsy require UK companies that have received a complaint from a UK company to directly contact the company raising the complaint. I'm assuming that there is a form correspondence that I can send to their legal contact? I'm also assuming after a certain period of non response (I'm not expecting one) that I'm free to re-list?

Again, many thanks for the response.

[stunthamster]

Having asked Etsy for clarification on how to appeal the copyright infringement I've received the following:

As we have previously explained, in accordance with Etsy's Intellectual Property Policy, Etsy accepts counter notices for alleged copyright infringement claims for US-based copyright reports in compliance with the DMCA.

Based on the reports of alleged infringement you received, we’re unable to process your counter notices, as they are not US-based copyrights. While a UK-based seller has the right to submit a counter notice for a US-based copyright report, we are unable to process a counter notice for any seller for a copyright claim in a jurisdiction where counter notices are not available.

You may consider trying to work things out with the other party directly or reaching out to an attorney with any further questions.

So I guess I have to argue it out with GW. I'm considering sending the address in the report the following E-mail:

I am writing in regard to the recent intellectual property claims submitted by Games Workshop against certain listings in my Etsy shop. The following product listings from my shop were removed as a result of Games Workshop’s report:

<snipped listings>

We take claims of copyright infringement very seriously and have carefully examined your claim. The notices did not specify which Games Workshop work or protected element is allegedly infringed by our listings. Instead, it referenced broad product pages containing hundreds of items, some of which span very different Games Workshop product lines. This lack of specificity makes it difficult to understand the basis of the claims or to address it properly.

Given our intent and efforts to avoid infringement, I respectfully request clarification on the claims so that I can address any legitimate concerns. Could you please provide details on:

Which specific Games Workshop intellectual property you believe each of my listings infringes? For instance, the exact model, artwork, or trademark that is of concern for each item.

What aspect of my listing is considered infringing? (e.g., is it a particular design feature, the overall appearance, the title/description, etc.)

With this information, I will be in a much better position to either make appropriate changes to the listings (if something inadvertent has slipped in that conflicts with your IP) or to explain why I believe our items are distinct and do not infringe. If the claim was submitted in error or as a precautionary measure due to a perceived similarity, a clarification could help clear the matter up quickly.

If, upon review, you find that our products do not infringe any of Games Workshop’s rights, I kindly ask that you withdraw the complaint (or notify Etsy of the mistake) so that our listings can be reinstated.

Conversely, if there are indeed specific issues, we are fully willing to address them – whether that means making adjustments or permanently discontinuing a product – but we can only do so if we understand what the issue is. Our goal is to comply with the law and operate with fairness towards IP rights, and we hope to find a solution that satisfies both parties.

In the interest of resolving this matter quickly, I would appreciate a response within 10 working days of this email If I do not hear back by then, I will assume that you do not intend to pursue this matter further at this time and will accordingly re-list the products for sale.

Please do not hesitate to contact me if you require further details.

Kind Regards;

Michael Duffy

Do folks think this is correct/a good approach?

[AndyJ]

Hi, yes that email to GW looks very sensible.

It is a pity, and frankly slightly incomprehensible, that Etsy have this strange policy with regard to DMCA takedown claims and counter notices where one of the parties is based outside the USA. There is nothing in the DMCA that says that is how the system should work. Everyone knows that different IP laws apply in different jurisdictions, but Etsy say in their terms and conditions that US law will apply, and obviously GW have accepted that the DMCA system applies, so it beats me why can't Etsy can't just follow the rules. Sadly I suspect they are so risk averse and scared of big players like GW that they are prepared to treat their members badly.

[stunthamster]

Cheers Andy - I figured it covered most of the bases. However, as I expected, I got this response:

Hello,

Thank you for your email.

An item does not have to be a 1:1 copy to be an infringement of copyright, rather any design that copies significantly from a design manufactured by Games Workshop is liable to be in breach. Additionally, although you may not have designed the items yourself, those involved in the physical production or distribution of these items are liable for any intellectual property infringement inherent in the designs.

A current example being your item https://www.etsy.com/listing/1778852103 Possessed Eradicators 1027 which bears a very close resemblance to Games Workshop's Oblitorators https://www.warhammer.com/en-GB/shop/ch ... hUUJ1JWkbG.

Please check your product range in full for models that have copied any significant part of Games Workshop’s characters and designs. Please remove all infringing products from sale.

For more information, please see our Intellectual Property Guidelines https://www.warhammer.com/en-GB/legal#I ... yGuidlines.

Regards,

Games Workshop Legal Team

For those interested, this is their model:
https://www.warhammer.com/app/resources ... webp&w=920
And the ones we sold:
https://hamsterfoundry.co.uk/products/p ... tors-44113
https://hamsterfoundry.co.uk/cdn/shop/f ... width=1080

Personally I think the phrase 'very close resemblance' is doing some heavy lifting here; my understanding of copyright as applied to a physical object is that you cannot copyright a concept, rather you can copyright your expression of a concept. My feeling is that the model we list is sufficiently distinct so as to not infringe their copyright. It's also annoying that this is the only specific they come back with; they still have not given details on the other listings.

I'm tempted to make a pain of myself and ask for specifics on the other listings. Sensible idea, or am I onto a losing side of an argument here?