Lone Wolf sends Cease & Desist letters to anyone using the term 'Army Builder'

[aboyd]

What?

Dire Bear defended JohnRTroy as "knowing his stuff" to which you replied that LoneWolfDevel has been corrected repeatedly. However, since you're talking about a different guy, it's kinda not related. Does that make sense?

He's taking the same position a bunch of people have -- that the trademark itself probably IS valid, but that the handling of this whole thing with PP could have been done better. For what it's worth, that's a position I agree with. Anyone can search Google Groups -- Usenet forums from the pre-Web Internet days. And that goes all the way back to 1981. And guess what? The phrase "Army Builder" doesn't appear ONCE before about 1997. "Building armies" and "building my army" appear repeatedly, but that's not quite the same.

So in my opinion, the trademark is pretty good.

(But I stand by my agreement with others that sending a letter with a deadline, legal threats, and then utterly incorrect demands is douchebaggy. I like that LoneWolfDevel came back to the thread and corrected himself. But there was a genuine mistake made -- one that has cost other companies huge amounts in fines. So I think it's valid to flag that as a problem and react to it, even if other posters think the word douchebag is objectionable. And at this point I'm really not talking to you, pawsplay, but rather addressing the whole crowd.)

 

[lonewolfdevel]

Just to make it official, a public explanation and apology for what went wrong with my message to Privateer can now be found on our website. The link is below for anyone here that's interested in reading it.

Explanation and Apology Regarding Message to Privateer Press - Lone Wolf Development Forums

 

[lonewolfdevel]

This isn't entirely true. It is true that there are situations whereby a site owner can be liable for infringements, but the scenario you posit is not one of them.

I asked our IP attorney about this today. According to him, the ruling I referenced established legal precedent that forum owners are essentially liable for trademark infringement in the same manner as covered by the DMCA. This apparently occurred through the ruling establishing a similarity relationship between the DMCA and trademark rights. Even though eBay won the case, the reason they did was because, when notified about the counterfeit goods, they took action to remove those listings. Apparently, this ruling had major implications.

Please don't ask me for more details on this. I'm NOT a lawyer and I only have limited information that I obtained from our IP attorney. I have paraphrased him here, and the above is my interpretation of what I was told.

 

[lonewolfdevel]

You or your lawyer are taking a judge's comment re the offering of goods on Ebay and applying it to Bulletin Board discussion.

Apparently, this judge's ruling established important precedent, since it was at a high enough level to have such implications and was handed down by a judge whose court and rulings are apparently recognized as authoritative. That's the gist of what our IP attorney explained. He's been doing IP law for decades, and we pay him handsomely for knowing this stuff, so I have to believe that what he told me is reasonably accurate.

DISCLAIMER: I didn't write down what he said as a quote and I have paraphrased him here. The above is my interpretation of what I was told. Please check with your own sources for verification and to get specifics.

Discussing army builder software on a board cannot be TM infringement to begin with, so no hoster liability can arise.

Absolutely correct. The example that I responded to cited hosting a product/tool with the name "[insert poster]'s Army Builder". That would be a case of infringement. Simply using the term in a post is definitely not infringement.

 

[lonewolfdevel]

What's more the Judge's summation includes something of relevance to your case:

Nevertheless, the law is clear: it is the trademark owner's burden to police its mark, and companies like eBay cannot be held liable for trademark infringement based solely on their generalized knowledge that trademark infringement might be occurring on their websites.

Edit: Just to clarify this, that doesn't then extend that PP would be liable even if they knew of specific incidents. You'd need to prove they were liable for contributory trademark infringement. This would probably fail, according to my reading of the precedents, given the nature of PP as opposed to those companies who have been found guilty of contributory trademark infringement.

I think you might need to go back to the lawyer again as it would appear there's still some confusion somewhere at your end.

Based on our IP attorney's explanation today, the ruling established that trademark rights are handled in analogous fashion to the DMCA. The site owner is not liable for any potential infringement until such time as they are notified. However, once the site owner is notified of an infringement, the site owner can potentially be held liable if they elect not to take action. If they do take action, they are not liable. The onus remains on the rights holder to police the IP. I believe this is entirely consistent with both the quote above and how the DMCA operates.

Again, I'm relaying the info that I received from our IP attorney, as I understood it. Please verify this info with your sources.

 

[lonewolfdevel]

In todays world, I think less of these generic names would happen with the internet so common. But way back when there was less communication. Especially if it was thought out of what you could force people to do in the future becuase you "owned" a description of a generic product. (EDIT: That is not to say this is what you are doing - these things seem to be all too common these days)

The Army Builder product was first released 12 years ago, back before Al Gore "invented" the internet. Technology was vastly different back then.

I'm a software developer. I wrote what was essentially the original prototype for Army Builder as a tool for my own gaming group back in 1997. Local gamers saw it and wanted it, then they said I should turn it into a product. I did that as a side thing. It wasn't until years later that the product (and now two others with Hero Lab and Card Vault) became a full-time thing.

The name Army Builder is boring because I didn't spend the time to come up with something inventive for a side project. The product then took on a life of its own and steadily grew. The reason we didn't register the trademark until 2003 was because I didn't think the monetary investment was justified until 5 years down the line, when the product had become an industry standard. At that point, I needed to protect it.

There was definitely nothing nefarious about the name or trademark registration.


The following is not directed at you, since you included appropriate disclaimers and *did* as the questions, but I encounter this issue regularly and feel compelled to bring it up....

It's incredibly frustrating when people instantly assume the worst and decry you for something that couldn't be farther from the truth. Is it really that difficult for people to ask questions and get the facts before rendering judgement?

 

[lonewolfdevel]

The Digital Millenium Copyright Act is not mentioned anywhere in Judge Sullivan's summation. The quote you use also does not appear anywhere within the Judge's findings. I don't know where you got it from, but it runs contrary to the findings of the Judge. I suggest you read the Judge's comments as they're a very clear walkthrough of trademark law as it pertains to the tiffany versus ebay case.

Doh! I accidentally deleted this segment from my previous post on this issue, so I need to circle back on this. Sorry about that.

I only have the information I was given by our IP attorney. He stated that the judge's ruling established the relationship. He did not provide me with any specific quotes, and I didn't ask, since I didn't think I'd need them. I honestly don't know the basis on which the relationship was apparently established.

What he told me was that, based on the ruling, the handling of trademarks is essentially analogous to the DMCA. It's quite possible that the various elements of the ruling establish comparable mechanics for trademarks that largely parallel those of the DMCA. If so, no explicit reference would be necessary, yet an analogous behavior would be established.

I will ask him about this specific issue and report back. Unfortunately, it's Friday night, so that likely won't be until Monday night. I'll send him an email, just in case he checks it over the weekend, but it's unlikely I'll hear back over the weekend. It definitely won't be tonight, since it's almost 3am in his timezone.

 

[lonewolfdevel]

The only real question I have is this: did LWD send PP this letter publically (like posting on PP's forum) or did they send it privately (through mail or post)? That might make a difference to me.

The message was sent privately to the forum admins, and it was not a formal letter. Privateer then elected to publish that private message on their website.

 

[lonewolfdevel]

Part of the problem is that they apparently hid under the radar until the trademark was uncontestable, and only now are attempting to educate people about it now that the mark can't be invalidated for being generic.

That couldn't be farther from the truth. The product has been out for TWELVE YEARS. We registered the trademark FIVE years after we first released the product instead of right away. And we've been policing the trademark now for 7 years.

The product has been the de facto industry standard within the miniatures community for about 10 years now. So, with respect to those involved in the industry where the name matters, we've been about as publicly visible as could possibly be achieved. This is simply the first time that the fact we're policing the trademark has become front-page news.

The reason that we're now in need of educating the public about the trademark is that, within the last year, a few fan-created tools were released that used our trademark within the names. Those tools were primarily for Privateer Press' games, and, probably as a result of these infringing tools, the community on Privateeer's forum had begun using the term "army builder" in a general manner on a somewhat regular basis. This is the first time we've encountered more than a few random posts misusing our trademark that way. So this is the first time we've actually had to educate the community on the proper use of the trademark in a public manner. In the past, the problems have been limited to contacting the authors of tools. This time, we needed to address the open community.

 

[S'mon]

Just to make it official, a public explanation and apology for what went wrong with my message to Privateer can now be found on our website. The link is below for anyone here that's interested in reading it.

Explanation and Apology Regarding Message to Privateer Press - Lone Wolf Development Forums

Sounds like good stuff.