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

[Xyxox]

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.

After reading this I can't get the storline from Eddie Murphy's Coming to America where the guy owns MacDougal's Hamburgers out of my mind. He was complaining about being sued and in one scene is reading the McDonald's guidebook on restaurant management.

Ironically, Art Buchwald successfully sued Paramount for stealing his idea for the movie.

 

[rjdafoe]

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?

Your right. The problem stems from everything we read about patent trolls, domain name buying, and any number of other things. At this point, it is natural for alot of people to think negatively first.

 

[Steerpike7]

After reading this I can't get the storline from Eddie Murphy's Coming to America where the guy owns MacDougal's Hamburgers out of my mind. He was complaining about being sued and in one scene is reading the McDonald's guidebook on restaurant management.

Ironically, Art Buchwald successfully sued Paramount for stealing his idea for the movie.

Heh. Yeah I remember that. Funny movie.

 

[JohnRTroy]

Heh. Yeah I remember that. Funny movie.

What was really funny was that a local McDonald's in the neighborhood where they were filming called corporate counsel because they didn't know it was being done as a movie and saw those arches go up.

 

[Steerpike7]

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?

Your right. The problem stems from everything we read about patent trolls, domain name buying, and any number of other things. At this point, it is natural for alot of people to think negatively first.

By the same token, the sort of letter initially sent to PP is very serious to the business on the receiving end. It is the responsibility of the sender to make sure the letter accurately reflects the situation.

Lonewolfdev asks whether it is really that hard to ask questions and get facts. I ask whether it is really that hard for a company to run a letter like the one Lonewolfdev sent by their IP counsel before going off half-cocked and causing everything that has followed.

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

 

[Steerpike7]

What was really funny was that a local McDonald's in the neighborhood where they were filming called corporate counsel because they didn't know it was being done as a movie and saw those arches go up.

That I didn't know. That is hilarious!

 

[pawsplay]

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?

No, I was talking about JohnRTroy, too.

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.

And I do not.

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.

First of all, as I have already noted, it's really difficult to Google this topic. If I try to screen out many obvious distractors, I end up with a lot of links to articles about the C&D letter itself, which is not helpful.

Second, the situation was very different before 1997. In 1996, I was still in college, and I was talking on MUDs and MUSHes at 2400 baud on my modem. Usenet was Usenet. For something like this, I would be thinking more BBS, which is not searchable on Google Groups.

Third, in those by-gone days of the Internet, a spreadsheet or any piece of software was a pretty good-sized download on a 24.4 modem. Starting in 1997, modems started getting a lot faster, a lot quicker, as did web sites. It's a whole different world.

So the fact that it's hard to Google any references before 1997 does not mean a lot. It would be like trying to track some fad by watching recordings of TV broadcasts from 1949.

(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.)

I didn't use that word.

 

[pawsplay]

Just as a test of concept, I have determined that Google Groups also has no references to "army list builder" or "army list calculator" before 1997. Furthermore, it has no hits for "purity test" or "real roleplayer," subjects which I know I was about to pull off of Usenet between 1994 and 1995.

EDIT: And magically, both "purity test" and "army builder" both appear in 1998.

 

[JohnRTroy]

Just as a test of concept, I have determined that Google Groups also has no references to "army list builder" or "army list calculator" before 1997. Furthermore, it has no hits for "purity test" or "real roleplayer," subjects which I know I was about to pull off of Usenet between 1994 and 1995.

EDIT: And magically, both "purity test" and "army builder" both appear in 1998.

But that doesn't matter.

Here's the thing, Trademark law is limited to what it can do. It is designed solely to product vendors and consumers from false advertising. It does not prevent anybody saying "Army Builder". All it does is the following: prevent other creators from using the term to describe their particular product (even if it's for free).

But because of that, this isn't a patent thing where you can invalidate it through proof of prior art. The only way the USPTO would reject it is if (a) they felt it was way too generic a term or (b) if somebody with an existing trademark would object if it was the same or too similar. Just because people used that term to describe software doesn't mean it is not a good trademark.

The thing is, Army builder passes a synonym test--you can easily call the software something that can convey the message...army maker, army creator, army constructor, army complier, etc. There are many synonyms for the term "builder" to convey the idea of the software, thus, when combined with the work army it makes a decent, if not spectacular.

And part of it is "first come, first serve". Like LoneWolfDevel said, they've had this software for a long time. People are assigned motive based on the awkwardness of the communication. I can understand the anger in referencing the DMCA, or the tone of the communication--but as far as the Trademark goes, it seems fine. There doesn't appear to be any evidence that they are "sneaking around" to get a trademark, which some people assume.

 

[S'mon]

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.



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.

Look, take a look at what the Lanham Act says:

§1114. Remedies; infringement; innocent infringment by printers and publishers

(1)
Any person who shall, without the consent of the registrant--

use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive...

15 USC 1114, Remedies; infringement; innocent infringment by printers and publishers (BitLaw)

This isn't a question of my opinion. There is question about the exact scope of trademark protection but it clearly does not extend to non-commercial use.