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

[lonewolfdevel]

Does anyone think it's a coincidence these letters are going out now instead of, oh, a couple of years ago?

We've been doing this for years. This is the first time it's become highly visible. That's the only coincidence here.

 

[S'mon]

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.

If your IP attorney is telling you to threaten legal action over use of the phrase Army Builder in bulletin board discussion, s/he is giving you very bad advice.

Edit: They are right of course that you have a problem in that your mark is very weak, being apparently a generic term in common use, and the solution is to strengthen your mark by increasing customer association of the phrase Army Builder with your particular army builder software. If someone else was offering army building software under an Army Builder mark then you have a case against them. You have no case against bulletin board operators or users and should not be threatening them.

This is me, I'm not a practicing lawyer but I teach copyright & TM law in the UK to current and future lawyers:
http://westminster.academia.edu/SimonNewman

 

[lonewolfdevel]

Either this notice was incompetently written or the intent WAS censorship of the Privateer Press forums. Your company's statement makes no distinctions between improper use of "Army Builder" with regard to other applications and generic use in your demands to either remove or replace the terms. The intent of the "education" was quite clearly to "mitigate" removal of further posts, not to exist in place of them. What need is there to mitigate something that isn't going to exist in the first place.

There were two issues cited and two actions that were called for. Issue #1 was the use of our trademark in the names of multiple tools created for Privateer's games (one specific example: "Warmachine/Hordes Army Builder"). Action #1 was that references to these directly infringing tools needed to be removed.

Issue #2 was educating the user community. Action #2 was to inform us whether this was something they wanted to do or if they would leave it to us. If education of the user community did not occur, then it was quite likely that someone else would create a new tool named "Fred's Army Builder". That would necessitate us having to contact Privateer about removing those references. With education, the likelihood of such a mistake would be mitigated, which would in turn mitigate the need for such removals in the future. So the education would both achieve an awareness of the trademark and avoid problems in the future.

In hindsight, could the language have been refined in the message so that it would be less open to the various interpretations presented here? No question. Was the message incompetently written? Everyone here is their own judge and jury in that regard.

I believe the real reason for your presence here is to whitewash what you can and to chill further discussion for fear of involving Morrus in legal disputes.

So coming in here and taking all this heat is an attempt to whitewash the situation? Seriously?

I'm just going to take a few deep breaths, fight the urge to bang my head on the wall, and move on to the next post.

 

[aboyd]

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?.

Perhaps a more accurate parallel is this. If you were a native citizen of the USA and knew the DMCA law well because you had to deal with it regularly, would you take offense when you saw an amateur botch it? What if that amateur specifically disclaimed knowledge of the law and then got upset with others because they "don't understand the process?"

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.

Except even that is too much. Your letter tells PP you will "educate your users about this fact via posting ourselves on your forums." However, every previous example I can find shows that such education campaigns have to happen on your dime, or on your forums, or with ad space you buy, or with people you contact without violating forum posting rules. There is no US law I know of which says you can impose yourself into a forum for such "education" of its users. The UK has a law which allows someone to reply in the same forum in which they are discussed, so that would kinda give you a right to post in reply to something, if this were in the UK and if any discussion of your product still existed on the forums. But neither are the case. So that whole section of your letter is bogus. He doesn't have to handle this education thing in any way, and doesn't even have to let you on his forum so you can do it yourself.

Of course, he could allow you to do it just to be nice to you. However, saying "I'll set my lawyers on you if you don't do this right now!" probably means that PP isn't interested in voluntarily being nice to Lone Wolf.

You want to educate people about your product and the proper way to refer to it? Follow the law and buy ads, publish articles, and remember that no one is obligated to give you a platform, at least not in the USA.* Sorry dude.

As mentioned in another post, if your IP lawyer disagrees, great, follow his advice. But if he came knocking on my forum's door, I'd refuse until he cited law, because I not only don't believe it exists, I've read certain things that flat-out state it doesn't exist.

(I run a forum for writers, and one of the discussion areas is a private section that discusses publishers. That discussion area is closed to publishers so that writers can feel safe talking about those publishers without reprisals. I've had publishers ask and then demand that they get in there so they can butt heads, post rebuttals, and so on. But that would completely undermine the safety of those writers, so there's no way in hell I'd ever say yes, and no publisher has found a law to force me to capitulate yet. I have removed a couple copyright violations, but I can do that without allowing the publisher to come in and "educate" anyone.)

* Some political ads fall under a law imposing "equal time for the opposing group." But that doesn't apply here.

 

[lonewolfdevel]

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.

So are you saying that we should not be stopping fan-created tools from using our trademark in their names? That flies in the face of what our IP attorney has told us repeatedly. Please explain, since it's conceivable our attorney is urging us to take actions that aren't actually necessary and that are just ticking people off without actually benefiting us.

Using a term in a bulletin board discussion is very obviously not commercial use.

Agreed.

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.

Agreed. I must have missed it - where did that become an issue here?

 

[jaerdaph]

@Dire Bare:

LOL!

 

[lonewolfdevel]

Perhaps a more accurate parallel is this. If you were a native citizen of the USA and knew the DMCA law well because you had to deal with it regularly, would you take offense when you saw an amateur botch it? What if that amateur specifically disclaimed knowledge of the law and then got upset with others because they "don't understand the process?"

To be fair, you did pull this quote out of a post regarding a very different aspect of the discussion. I'm not saying it's inappropriate here, but there's been a bit of quoting out of context in this matter, so I'm a bit sensitive when that happens yet again.

Except even that is too much. Your letter tells PP you will "educate your users about this fact via posting ourselves on your forums." However, every previous example I can find shows that such education campaigns have to happen on your dime, or on your forums, or with ad space you buy, or with people you contact without violating forum posting rules. There is no US law I know of which says you can impose yourself into a forum for such "education" of its users.

Then I need to add this to the next conversation with our IP attorney. It's quite possible that I didn't grok something he told me here. Crap!

Thanks for the pointers and the discussion points.

 

[jaerdaph]

Methinks their attorneys only handled the one Forward Kommander C&D letter for Lone Wolf. Methinks Lone Wolf decided to BULLY everyone else all on their own, thus the ignorance of actual law in their posts on various message boards. Methinks the public relations damage is irreversible now - Lone Wolf has become the new Outlaw Press for 2010 in the minds of gamers. Even backpeddling won't help them now.

 

[arscott]

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 would not be so quick to accuse the patrons of this forum of ignorance in these matters, especially when your own organization seems to confuse Copyright law with Trademark law.

 

[Doc_Klueless]

I would not be so quick to accuse the patrons of this forum of ignorance in these matters, especially when your own organization seems to confuse Copyright law with Trademark law.

Especially since some of the patrons are either lawyers who have some expertise in the matter or instructors who teach lawyers about these matters. It appears that Lone Wolf either got bad legal advice or didn't actually seek legal advice in this particular matter.

Gamers never forget and seldom forgive. Bad step for Lone Wolf.