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

[S'mon]

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.

This is not the kind of thing I would say to a non-lawyer, because of the potential for confusion. What you need to understand is that primary liability needs to arise before any possibility of vicarious/contributory/secondary liability can arise. A bulletin board operator can't be liable for TM infringement through people engaged in normal discussion on its forae, because that discussion cannot give rise to primary liability.

Conversely, if people are offering fake Rolexes for sale on my commercial website (Ebay - note that Ebay makes money off the sales), and I have good reason to think they're fake, and I allow this to continue, then I can be held liable. This arises from the normal operation of TM law, nothing to do with the DMCA though. If there's a point re the DMCA it's that take-down upon notice should prevent liability, just as the DMCA protects OSPs from liability if they take-down upon notice.

 

[S'mon]

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.

I don't think so, but I'd have to know more. TM Infringement requires commercial offering of goods or services under my reading of both Lanham and the UK TMA, writing free software and calling it "X's Army Builder" is not infringement. This is why WoTC/Hasbro lawyers go after you if you put "D&D" on a product you charge money for (Ema's), but not if you're offering a free adventure etc. With no commercial use you have to use copyright, which is a much trickier prospect.

 

[S'mon]

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.

I think he may have told you something that was technically correct but potentially misleading - "a litle knowledge is a dangerous thing". It's definitely not the case that you can refer to the DMCA when seeking to protect your TMs.

 

[S'mon]

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...

You need to understand that they're not infringing your Mark. I can serve burgers in my house and call them McDonald's burgers (I am a member of a sub clan of the MacDonalds, so I even have a justification!) and that is not TM infringement. I can even put up a set of RPG rules free on the Internet and call them D&D and I'm not infringing WoTC's TM, although I wouldn't be surprised to get a nasty letter from their lawyers seeking a 'chilling effect'.

Your appropriate action is to seek, through publicity, to get people to associate the descriptive phrase Army Builder solely with your product. You can threaten people if you like (though this may give rise to liability on your part so I wouldn't advise it for a small company like yours), but you cannot successfully sue for non-commercial use of your Mark.

 

[evilref]

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.

S'mon's essentially said what I would say (and more concisely). If your lawyer has not established with you that non-commercial infringement is not liable, or is offering you the above advice regarding trademark law and the DMCA (In no way does Tiffany versus Ebay establish what your lawyer says in any general sense other than Ebay being potentially culpable because of Ebay's own practices and standards) then I'd strongly suggest finding another IP lawyer before you end up on the losing end of an expensive trademark suit the first time someone stands up to you.

 

[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

I've read your explanation/apology and I think there are still some big problems with it, but I think I've explained why above.

My advice to a small businessman with a registered trade mark: be nice.

1. Do go after clear-cut infringing uses of your mark, you need to do this under US law to maintain the validity of your mark. But you first need to understand what an infringing use is - consult your lawyer on a specific case. They can advise you whether or not you have a prima facie claim.

2. Where your mark is descriptive, do engage in publicity to educate customers to associate your Mark solely with your business. But don't do this by threatening people! Don't talk about 'improper use'. Don't theaten non-commercial users. At most, a forum post saying something like "Hey guys! Army Builder is a registed trade mark referring solely to our software" should probably be ok. If in doubt, ask your spouse/friend/PR people whether your post is projecting a positive image of your company.

 

[JohnRTroy]

You need to understand that they're not infringing your Mark. I can serve burgers in my house and call them McDonald's burgers (I am a member of a sub clan of the MacDonalds, so I even have a justification!) and that is not TM infringement. I can even put up a set of RPG rules free on the Internet and call them D&D and I'm not infringing WoTC's TM, although I wouldn't be surprised to get a nasty letter from their lawyers seeking a 'chilling effect'.

Your appropriate action is to seek, through publicity, to get people to associate the descriptive phrase Army Builder solely with your product. You can threaten people if you like (though this may give rise to liability on your part so I wouldn't advise it for a small company like yours), but you cannot successfully sue for non-commercial use of your Mark.

Actually, the problem is no legal precedent has really been set I believe when it comes to publishing. Does a software package with the name Microsoft in it constitute non-infringement. This seems to be a grey area of the law that has not been decided yet, at least not through litigation. For example, this organization mentions that on this page.

Many companies claim trademark infringement or dilution when pursuing unauthorized uses of their names or logos on the Web — but it's not entirely clear how these laws apply to noncommercial activity on the Net. Many attorneys argue that this is currently a gray area, but the use of another company's logo on a noncommercial page could be considered trademark infringement. Fair use as applied to trademarks is usually more strictly enforced than it is in regards to copyright.

The key thing also is that different attorneys will have different ways of interpreting--which is how law precedent is decided, by litigation and judicial interpretation of that litigation. It's also probably biased by the role of the attorney and their beliefs. You'll probably get different views of IP law if you talk to a lawyer like Lessig than you would from a Hollywood attorney. Similarly, S'Mon might have more liberal interpretations of fair use than an attorney whose primary purpose is to protect his client.

I do hope we get some more clear legal precedent to the limit of non-commercial use of trademarks. I dislike overzealous trademark protection--I think McDonald's goes a little to far with their interpretation of "Mc", I don't think Steve Jobs should have a lock on iWhatever. But I also think if somebody names their RPG rules D&D, or somebody uses the term Microsoft or Apple in their Freeware utility, it's not right.

As far as if LW has a lock on "Army Builder" goes. I don't see it as being hard for users or chilling towards free speech. You can call the software by a lot of other names. Army constructor, army maker, army developer, army designer, army calculator. And that's only if you don't take out the army part--replace with military, etc.

 

[Kafen]

*still does not see how forum posts even factor into the issue without a transfer of product*

Directly speaking to US law...

Sleekcraft factor 6, dealing with advertising channels, could deal with the method of confusion which relates to a forum. However, it would not transfer the liability of the case to the site unless there was an actual link between the site owner and product - the source of the product confusion. EDIT: Just to give an example, I say. "I know a site that tracks a Product X torrent." The simple usage of the word - even talk about that torrent - does not mean the site is liable for the torrent usage going by even the strictest anti-torrent rulings in Western countries. You have to actually shift over to China, not bashing China, to find a nation willing to compromise online speech in order to turn the simple usage into an actual violation.

If you go to Playboy vs. Netscape, you see where judges are essentially begging for new laws that adequately deal with trademark infringement beyond Sleekcraft factors. Keeping that in mind... As a mark holder, I would not want to take any case to court that involves the discussion** of my products on a forum without the actual exchange of goods through the forum posts.

*Dislclaimer: I am not a lawyer, but I deal with it with my site management.

** Going with the theory that html-linking to a site is an etiquette breach - not a violation under the law.

 

[Steerpike7]

I don't think so, but I'd have to know more. TM Infringement requires commercial offering of goods or services under my reading of both Lanham and the UK TMA, writing free software and calling it "X's Army Builder" is not infringement. This is why WoTC/Hasbro lawyers go after you if you put "D&D" on a product you charge money for (Ema's), but not if you're offering a free adventure etc. With no commercial use you have to use copyright, which is a much trickier prospect.

This is not the case in the U.S. If you use someone's trademark on a free product and they can demonstrate a likelihood of confusion, you've got trouble.

 

[Steerpike7]

You need to understand that they're not infringing your Mark. I can serve burgers in my house and call them McDonald's burgers (I am a member of a sub clan of the MacDonalds, so I even have a justification!) and that is not TM infringement.

You can do this on your house. If you were independently wealthy and opened up a restaurant where all you did was give away free burgers to the public, and you called them McDonald's hamburgers and had the McDonald's golden-M trademark on it, you'd have a problem on your hands.

And using McDonald's as an example opens, potentially, another can of worms because that's a famous mark.