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

[lonewolfdevel]

Instead of demanding, woudn't a request have been a better first step? (Or did you try that already?)

With regards to addressing the posts with direct trademark infringement, immediate action is always required. If someone was in the midst of vandalizing your car, would you walk up to a police officer and say...

"If you wouldn't mind, could you please be so kind as to give me a hand over here. It seems that someone is vandalizing my car. Oh, no hurry. After you finish your coffee would be fine. Or perhaps tomorrow, if you're about to end your shift."

In the context of IP enforcement, that's a reasonable analogy to what you're asking here. Also, in the context of IP enforcement, sending a message that doesn't involve the attorneys is generally viewed as a "request". Albeit, one that entails urgency to deal with the problem.

Could we have separately made a gentle request regarding the education of the user community? The two issues were highly inter-related, so action on one would inherently involve the other. That meant that the best way to handle the issues was within a single message. Remember also that the only thing we required from them in this matter was to let us know whether they wanted to handle the process themselves.

 

[S'mon]

Digital Milllenium Copyright Act - the clue is in the name. Jeez, *rolls eyes*

Making legal threats against people when you don't know what you're doing is a really bad idea. That's what lawyers are for. A wise man (Steve Sailer) pointed out that the difference between 5 years in jail for blackmail, and a multimillion dollar payoff "in settlement of threatened lawsuit", is getting a lawyer to write your letter for you:
Steve Sailer's iSteve Blog: Legal vs. Illegal Blackmail

 

[S'mon]

lonewolfdevel - I'm only going to say this once. US TM law requires you to enforce your mark vs infringers, or risk losing it. An infringer is someone using your mark (or similar) commercially, ie in connection with an offering of same or similar* goods or services, such that a customer might think their company/product/service was associated with yours - same company, licensed product etc. Using a term in a bulletin board discussion is very obviously not commercial use.

*Famous marks can get protection vs non-similar uses that tarnish or dilute the mark, but while that might help WoTC sue the manufacturer of Dungeons & Dragons sex toys, it won't help you as your mark is not famous.

As a separate issue, a mark risks losing protection if it becomes a generic term, but that does not give you any legal right to sue people who use the term generically! Businesses engage in customer education campaigns to try to keep terms like Xerox and Hoover non-generic, but they don't, and can't, sue the public.

Finally, Copyright law is not the same as Trade Mark law. Never never never mix up the two.

 

[Jonny Nexus]

I don't know anything about this registration business or having an incontestable trademark, but it sounds fishy to me. Notice is a big deal in the law. As a general rule, people aren't subject to laws and regulations of which they are not aware (or more accurately, of which it cannot be said that they should be reasonably expected to be aware)

There's very recently (apologies if someone's already mentioned this) been a similar case in the UK, involving the issue of you can't "hide" something for x years and then come out of hiding.

Basically, you can't just build a house in the UK, you need permission, and it's almost impossible to get permission to build a new house on rural land. But if you do built it anyway, and no-one complains for four years, it's automatically granted retrospective planning permission, so...

A farmer who secretly built a castle and lived in it for four years while it was hidden behind bales of straw was ordered to demolish it by a High Court judge today.

Robert Fidler hid the mock Tudor house behind hay bales stacked 40ft high while it was being built in an attempt to avoid having to apply for planning permission.

...

Then in August 2006 Mr Fidler ripped down the disguise and the castle was revealed in all its glory. He applied for a certificate of lawfulness on grounds that it must now be lawful having stood for four years without any objections.

Farmer must demolish castle he hid behind straw bales | News

And he lost. They ruled that the four years starts from the point that you finish the building work and unveil your house to the world, that the the wall of straw bales constitutes part of the building work, and so the clock doesn't start ticking until they come down. And they also had some words about not allowing people to profit from deliberate deceptions.

 

[lonewolfdevel]

I have a hard time believing that the only way to enforce the trademark was to take this drastic of a move. Considering most of these references were made by people posting on a forum, and not Privateer Press themselves using the term, it seems very demanding to try and force another company to protect your trademark for you.

Removing or editing direct references to tools that incorporate a company's trademark within their name always requires immediate action. Unless, of course, the company wants to risk losing the trademark through implicit consent to its use.

When a forum is involved, the forum owner must be contacted to deal with content that infringes. That's the way it officially works, because the owner is the only one with such control. If someone posted references to their new tool, "Jim's Army Builder", here on ENWorld, we'd have to contact Morrus to have it addressed.

We did not demand that Privateer take any further action to police our trademark. We gave them the option to control how it was handled, since it's their site and we wanted to let them have whatever level of control they wanted. It was a courtesy. If they'd said "no", then we would have handled it entirely.

 

[lonewolfdevel]

"Assuming that the improper references to tools using the name "Army Builder" are rectified and you confirm to us within 72 hours that you have done so, we will assume that infringement was unintentional and consider that matter closed. In the event that we have not heard back from you within the prescribed timeframe, we will have no choice but to refer this matter to our attorneys for further legal action."

With respect, sir, that sure looks like a direct threat of legal action if they didn't comply. I suspect pretty much everyone here will read it that way. Knowing the folks here, I don't think you will be able to convince them otherwise.

You may not be terribly familiar with our community, and I offer you a bit of advice - in the face of that quote, I think continued plain denials will not serve your interests well.

To my knowledge, in situations like this, the following sequence of events generally occur:

Step 1. Communications that don't involve the attorneys. This is optional, but the approach we took with Privateer.

Step 2. Communications that involve the attorneys, incorporating formal demands and with specific consequences of legal action.

Step 3. Formal legal action.

Step 1 leads to Step 2. Our message was Step 1. Privateer - the audience for the message - knows this quite well.

PLEASE NOTE: The original message was sent to Privateer and was not written for an audience that has no familiarity with IP enforcement processes. So it's not surprising the many readers in the gamer community don't understand the process.

However, I'm honestly stunned at how many people are taking offense at something for which they don't understand the process. Seriously, if you went to a foreign country and witnessed a bizarre ritual that seemed wrong to you in some ways, would you take offense at it? Or would assume that maybe you don't have all the facts and need to better understand what's going on before rendering judgement?

I'd like to think the latter, but my experiences over the fallout from this matter imply the former may be much more common. As you can imagine, that's extremely frustrating.

 

[lonewolfdevel]

I read the letter, and all I can say is this is why you have counsel send this sort of thing out instead of doing it yourself in a clumsy and inaccurate fashion.

The goal was to avoid getting counsel involved in this initially, since it was felt that doing so would be viewed as more confrontational than the informal message. In hindsight, that was likely the wrong choice with Privateer. Lesson learned.

Beyond that, I'm not an attorney and so I am unable to respond to your other points. However, I will definitely bring them up with our attorney tomorrow to gain some insight.

 

[FireLance]

PLEASE NOTE: The original message was sent to Privateer and was not written for an audience that has no familiarity with IP enforcement processes. So it's not surprising the many readers in the gamer community don't understand the process.

However, I'm honestly stunned at how many people are taking offense at something for which they don't understand the process. Seriously, if you went to a foreign country and witnessed a bizarre ritual that seemed wrong to you in some ways, would you take offense at it? Or would assume that maybe you don't have all the facts and need to better understand what's going on before rendering judgement?

I'd like to think the latter, but my experiences over the fallout from this matter imply the former may be much more common. As you can imagine, that's extremely frustrating.

It's a sad fact of human nature that most of us tend to automatically assume that the other guy is wrong. And not only wrong, but evil. Or maybe it's just us gamers who have been conditioned to act this way because most of the creatures we meet in an adventure are usually evil, wrong, and out to kill us.

 

[Lanefan]

@ lonewolfdev:

If you don't want people using your product's name in a generic manner, my suggestion would be to come up with a more original - and thus less generic - name for your product. Given your company's name, something like Wolf Players' Army Construction Kit (a.k.a. WolfPACK) ought to do. And seeing as it took me less than a minute to dream that name up, surely someone on your team can do better.

And if your product's name then gets popular enough that people - not just gamers, but the general public - use it generically anyway, I'd say you're in good shape.

Lanefan

 

[lonewolfdevel]

Maybe I'm getting confused. How would you describe the concern about genericization of a trademark as anything other than a desire to prevent people from using the term descriptively? I don't know if we're just quibbling about the word 'demand,' but it seems to me that Lone Wolf is suggesting that Privateer is legally required to remove these descriptive generic uses of the term from their forum. I understand the fact that Lone Wolf wants people to associate the term with their product, and would like to prevent genericization of their trademark (more on that in a minute), but where does trademark law say a company is allowed to impress/draft another company in their education effort. Why should Privateer have to help Lone Wolf educate the public? Please correct me if I'm wrong, but it is so far my understanding that the letter/email threatened legal action if Privateer didn't remove both kinds of improper use of the term.

I'll try to explain. There were two issues cited in the letter. Issue #1 was with references like "Jim's Army Builder". Issue #2 was with the use of the mark in a generic manner. The solution to #1 was to edit/remove the specific posts referencing "Jim's Army Builder". The solution to #2 was to educate the user community and we asked Privateer to indicate whether this was something they wanted to be involved in.

With regards to #2, we could have readily posted about the issue on their forums and seen to the matter ourselves. However, most site owners prefer to have control over such matters, so we presented the option for Privateer to do this if they preferred. This was intended as a courtesy - certainly not a requirement. The letter asks for Privateer to tell us whether they wanted to do so.

As for all of the posts that misused our trademark, well, we can't change history. It occurred. So no changes to the individual posts were required. However, a new post could be readily appended to each of those threads that flagged the problem to future posters in that thread and linked to a central post that provided a full explanation. All that was assumed to be our responsibility as the trademark holder, unless Privateer preferred otherwise.

Finally, why would it be so terrible in theory for a company's product name to become synonymous with the function?

That's a valid question. According to our IP attorney, striving for that could potential lead to genericization of the trademark. So the goal is a balance of trying to establish the brand prominently while also not becoming a generic term.

So here's where this get's lame. What we're talking about isn't economic competition. Nobody is profiting off the use of "Army Builder" to refer to some dude's excel sheet. How is Lone Wolf being harmed?

According to our IP attorney, it's a problem. I completely see your point, but I also have to believe that our IP attorney sees something that I'm missing. So we take action on these things.

Thanks for taking the time to outline all your thoughts on this.