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

[S'mon]

And also: Let your Lawyer handle your legal business.

Yes, anything involving threats or warning should be handled through a lawyer. Obviously normally commercial activity involves eg contracting and you don't normally need a lawyer for buying and selling. Anything adversarial though, you need a lawyer. Absolutely, anything involving claims of intellectual property infringement (in the UK you can bring a claim for debt recovery up to £5,000 in small claims court without needing a lawyer). You don't see WotC games developers sending out C&D letters, do you? They refer to their lawyers. Their lawyers often tell them "don't do anything" - unlike TSR, WoTC/Hasbro have real lawyers who seem to know their stuff very well.

 

[lonewolfdevel]

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.

Our IP attorney had some downtime today and got back to me on this. It seems my statement above was basically accurate. The ruling set forth a scheme that draws heavily from the DMCA framework, without calling it such. The bottom line is that the ruling clarified what forum owners should do to avoid liability. This is his opinion, which others here may debate, but I'm going to trust it.

Oh, and apparently the fact that the specific case had to do with counterfeit goods does not limit the ruling's scope. He says it established basic rules for handling trademark situations in general. Again, others can disagree with this interpretation if they choose.

 

[Kafen]

Using the DMCA in such a manner? If people think the banter from forum gamers is rough, I can only imagine the discomfort for all parties when the EFF sends a lawyer instead of hitting the submit button.

 

[lonewolfdevel]

I think Lonewolfdev did the right thing by quickly trying to clear everything up, and that is admirable because not all businesses would bother, but let's not forget that this whole thing could likely have been avoided or at least mitigated.

I agree and this has been quite a learning experience. Suffice to say, it won't be a repeated mistake.

If lonewolfdev is howling victim here, I'm not buying it.

Prior to the realization that the word "improper" was used instead of "infringing", I took exception to some of the claims being made.

For example, if that one word change is made, we outlined what needed to be done on the forums and stated clearly that we were prepared to handle it, since it's ultimately our responsibility. Privateer was afforded the option of doing it, if they so chose, and they were only asked to tell us whether they wanted to handle it. Various folks quoting the message took the explanation of what was needed out of context and claimed we demanded Privateer do it, which would not be accurate at all. Even Morrus did this on the front page news item.

Once the realization set in about using the wrong word, much of this became moot. I think you'll find that my tone at that point changed from defensive to conciliatory.

 

[S'mon]

Our IP attorney had some downtime today and got back to me on this. It seems my statement above was basically accurate. The ruling set forth a scheme that draws heavily from the DMCA framework, without calling it such. The bottom line is that the ruling clarified what forum owners should do to avoid liability. This is his opinion, which others here may debate, but I'm going to trust it.

Oh, and apparently the fact that the specific case had to do with counterfeit goods does not limit the ruling's scope. He says it established basic rules for handling trademark situations in general. Again, others can disagree with this interpretation if they choose.

Your lawyer was technically accurate but it sounds like his statement to you was misleading. From what you say it doesn't sound like he has done much to clarify it either. If I were you I wouldn't be that happy with him. OTOH it may be that you are still misunderstanding what he is saying to you - Tiffany concerned limitations on contributory liability by hosters, it did not create a new framework for holding hosts liable, which is how you seem to have approached it.

 

[lonewolfdevel]

It doesn't matter what the purpose of trademarking it was, the fact is, it is making everyone else's life difficult - including his own. I am sure he would rather code than track down misuse of his common description trademark.

So very true....

I still don't know wether to believe him or not that it was not intentional, in order to corner the market. The reason for this is that he continues to say that people cannot use the phrase army builder in a description of a product.

There are two things we're saying, which appear to be getting conflated here.

1. Publishers of software tools/products associated with gaming cannot use our trademark as part of the name or description of such tools. If a website has a reference to such a tool on it, we must also ask them to take that reference down.

2. Consumers can use whatever terms they want, whenever they want, and can use the term "army builder" in a descriptive manner. However, we don't want our trademark to become generic, so when we see folks doing that, we must strive to make them aware that we have the trademark. If people are aware of the trademark and choose to use the term descriptively anyways, that's their right. For example, lots of folks in the South call any soft drink "a coke" (e.g. "What kinda coke ya'll want?").

Does that help?

 

[lonewolfdevel]

Your lawyer was technically accurate but it sounds like his statement to you was misleading. From what you say it doesn't sound like he has done much to clarify it either. If I were you I wouldn't be that happy with him. OTOH it may be that you are still misunderstanding what he is saying to you - Tiffany concerned limitations on contributory liability by hosters, it did not create a new framework for holding hosts liable, which is how you seem to have approached it.

Actually, he gave me a lot more information, but I'm electing not to go into more detail here. The reason for that is simply that I don't understand the subtleties of this stuff and won't be able to argue/defend any of the points he made to me. Since I can't do that, it's folly for me to engage this further.

That being said, if you'd like to consult with him directly on these issues, I'll be happy to provide you with his contact info. Please email me for the info if you'd like it. Please also include your full contact info so that I can relay it to him.

 

[pawsplay]

I agree and this has been quite a learning experience. Suffice to say, it won't be a repeated mistake.



Prior to the realization that the word "improper" was used instead of "infringing", I took exception to some of the claims being made.

For example, if that one word change is made, we outlined what needed to be done on the forums and stated clearly that we were prepared to handle it, since it's ultimately our responsibility. Privateer was afforded the option of doing it, if they so chose, and they were only asked to tell us whether they wanted to handle it. Various folks quoting the message took the explanation of what was needed out of context and claimed we demanded Privateer do it, which would not be accurate at all. Even Morrus did this on the front page news item.

Once the realization set in about using the wrong word, much of this became moot. I think you'll find that my tone at that point changed from defensive to conciliatory.

Well, kudos for coming here and talking it out with folks. I think it did help. I'm going to go ahead and say that your tone has changed to less defensive and more conciliatory. Maybe this is just my background in counseling here, but it seems to me that you several times fell into the habit of telling people what to think, instead of telling them the facts. For instance, the above, while essentially accurate in the events that occured, seems to convey the interpretation this was all some big misunderstanding. However, it is very much my viewpoint that misunderstandings compounded a very basic issue which was clearly understood; you cannot defend this mark without engaging in some of what other people are going to view as bullying. While you can, and apparently have decided to, try to manage the distinctiveness of this mark through various actions, clearly you understand the potential and the actuality of it being genericized.

I think you should consider carefully the relative merits of spending your time and energy defending the mark, versus developing it and doing what you enjoy and profit from. Especially, I would urge you to be cautious about pursuing certain actions with zeal, considering that your business model depends on friendly and non-litigious cooperation between different mark holders in the same industry. While a business depends on certain rights and assurances, a business does not consist of rights and assurances, a business is a relationship with your customers and other businesses in the industry.

 

[S'mon]

1. Publishers of software tools/products associated with gaming cannot use our trademark as part of the name or description of such tools.

I don't think you can stop them using it descriptively - "Our program XX is army builder software" - that's the problem with having a descriptive mark. Your mark would actually be entirely unregistrable as an EU-wide mark simply due to its being capable of being used descriptively (per ECJ in Doublemint/Wrigleys vs OHIM).

 

[Garthanos]

I don't think you can stop them using it descriptively - "Our program XX is army builder software" - that's the problem with having a descriptive mark. Your mark would actually be entirely unregistrable as an EU-wide mark simply due to its being capable of being used descriptively (per ECJ in Doublemint/Wrigleys vs OHIM).

And the US has free-speech as one of the highest laws of the land and trademarks should not ever be allowed to supercede it...

But the us patent office is in the business of keeping lawyers in business so they let almost anything get through and let the lawyers duke it out, after all they aren't really qualified to make most of the decisions about what to deny or not. (I am only mildly exaggerating) so in effect it takes a bunch of money to undo abusive patents and undo abusive trademarks.... they rarely get preemptively stopped.

I am pretty sure by law you could even describe a company as Dyas Designs - a lone wolf developer. Let alone a product as Arcane Enemies - a fantasy army builder.

http://cyber.law.harvard.edu/~wseltzer/INTA/sld016.htm