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

[Infiniti2000]

This is just wrong. Practically the first thing we learn in first-year Property is that property law involves bundles of rights. There is no legal duty to police a trademark. If you are the legitimate holder of a trademark, that confers on you a bundle of rights regarding how you can use and control the use of your mark. At best, this statement seems to be a pigheaded attempt to make it seem like it's not their fault that they're taking these actions, but at worst it's a gross misunderstanding of the law.

This simply isn't true, so I recommend you double check with your textbooks and maybe your professors. The best example here is, in fact, Xerox, who spent millions of dollars "educating the public" so that their name doesn't get genericized. Granted, Lone Wolf is nowhere near at the same level of common use as Xerox so the analogy is crap, but Xerox is definitely the prime example of a successful defense. Counter examples of companies NOT taking the appropriate action to fight genericide are cellophane (DuPont), escalator (yes, originally a trademark), and lite beer.

 

[Infiniti2000]

Note: IANAL but I did sleep at a Holida Inn Express® last night.

 

[Tale]

Actually, he's correct. It's to their advantage to enforce it (the risk being that they might lose it if they don't), but they don't have a duty to do so.

The statement made by Lone Wolf ("we are legally required to police our trademarks") is not true; what is true is that if they choose not to do so, there is a chance they may lose the ability to enforce their rights concerning the trademark.

But policing them is a choice, not an obligation. It's a risk-assessment decision.

I'll concede that. Maybe I was making a semantic argument.

 

[ExiledinElysium]

It's not ridiculous, it's absolutely true. Trademark law encourages the enforcement of that trademark or else they risk becoming unable to enforce it.

Trademark isn't like patents or copyrights. Trademarks can be abandoned through lack of use and infringements can be defended as implied consent if not enforced in a timely manner.

Yes, you're completely right, but that is not the same thing as saying they're legally required to police their trademark. Holding a trademark confers rights, not duties, and this is an important distinction. Supposed infringements can indeed be defended as implied consent if not timely enforced, and I think the point a lot of people on this thread are making is that it would behoove a company like Lone Wolf to give express consent to a large chunk of infringements that aren't actually harmful to their profits, since what they are doing risks alienating whatever fanbase they have.

Being encouraged to do something because it's probably in your own better interests is not at all equivalent to having a legal duty imposed on you to perform. That very equivocation is what leads me to believe they haven't actually consulted lawyers. Either that or they need to fire their in-house counsel. It's sad but true that having a JD doesn't actually make one a reliable legal advisor.

I'd also like to point out that I think a lot of you are misconstruing what it means to have registered the trademark "Army Builder." Someone earlier on this thread pointed this out but it got lost in the shuffle. The trademark is inextricable from its context. The peanut butter company (the example used by the aforementioned member) owning the trademark "Skippy" doesn't preclude the dog food company from using the same word as their title. Skippy (the peanut butter) is not a trademark by virtue of the word itself, but rather the whole image and the way it's used. It's a tradeMARK, not tradeWORD. The image is very important. When being discussed verbally or textually, the context is just as important as the image we visually associate with the word. I can talk about a person who hires mercenaries and refer to them as my "army builder" without infringing on the trademark. I would be infringing (assuming Lone Wolf's trademark claim is valid), however, if I were to refer to an excel sheet I set up to tally up my Warhammer army roster as my Space Marines Army Builder.

I should note that I could be wrong about my above analysis. It's possible that the image is far more important than I'm making it out to be. I might track down a trademark expert on the faculty here and ask them about this.

Cheers,

Kyle

 

[Dausuul]

If they wanted a trademark, they should have called it "Roster Monster" or something.

Then they'd get sued by Monster Cable.

 

[Glade Riven]

And here is where it depends on how good of a lawyer you have...

Either way, Lone Wolf handled it in a sloppy manner, and are rather deserving of Privateer Press's reaction of meeting the request while kicking them in the shins.

 

[ExiledinElysium]

This simply isn't true, so I recommend you double check with your textbooks and maybe your professors. The best example here is, in fact, Xerox, who spent millions of dollars "educating the public" so that their name doesn't get genericized. Granted, Lone Wolf is nowhere near at the same level of common use as Xerox so the analogy is crap, but Xerox is definitely the prime example of a successful defense. Counter examples of companies NOT taking the appropriate action to fight genericide are cellophane (DuPont), escalator (yes, originally a trademark), and lite beer.

I think you misunderstand me. I'm saying it's their right to do exactly what Xerox tried to do and it's their right to enforce their mark. The way they've stated the situation, though, suggests that they don't have a choice in the matter, which isn't true. Refer to my responses to Tale and to Morrus's post.

I'd be curious to know how much damage would actually be done to Lone Wolf as a company and to their profits if people were allowed to use 'army builder' as a generic term for roster construction tools. If they really are the top dog in the industry, I doubt it would matter in the slightest. Take a look at Xerox; they're still the biggest copier firm aren't they?

 

[fugue27]

Wow. I'm a big fan of their HeroLab (am I allowed to type that here?) software but I gotta say this sounds like a real douchey move on their part. I understand the need to protect IP and all that but, wow. I'll keep using the product that I've bought but I dont know if I'll be giving any more of my money to this company.

I agree with you 100%. I love HeroLab, but man.... this is just, ouch.

 

[Wulf Ratbane]

Either way, Lone Wolf handled it in a sloppy manner, and are rather deserving of Privateer Press's reaction of meeting the request while kicking them in the shins.

It's funny watching the flea dictate terms to the dog.

I checked out Privateer's official army builder app, iBodger. It looks pretty slick.

 

[ExiledinElysium]

It's funny watching the flea dictate terms to the dog.

I checked out Privateer's official army builder app, iBodger. It looks pretty slick.

I think it's enormously significant that you just referred to iBodger as an army builder app. Did you use that term intentionally tongue-in-cheek?