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

[Umbran]

Folks,

I refer you to The Rules - if you need or want a moderator or admin to do something about a particular thread, reporting a post or taking it to e-mail/PM is the appropriate way to go about it. Requests for such action in the thread itself are not appropriate, and are unlikely to get a positive response from the staff.

Addresses for the moderators are available in a post stickied to the top of the Meta Forum.

Thanks for your time and attention.

 

[Infiniti2000]

Source?

Edit: Statute, precedent, or at least an obiter statement. I've seen all kind of specious claims by rightsholders, but I haven't seen anything to back them up. There may be though - I teach UK law not US - but I've looked and haven't seen it.

My advice is directed against rights holders, especially smaller companies - don't sue or threaten to sue unless you have a case, and be clear what you need to have a case.

That's a key distinction (advice to rightsholder and not potential infringers) that is not present in your previous post. My take from your statement was essentially "feel free to use what you consider weak marks in your software name because they won't be able to prosecute you." This is terrible advice. Your previous statement is quoted again, below, for convenience.

But a private individual writing software, putting it on a website for free download, and calling it 'army builder software', is clearly not making commercial use of the mark, IMO.

Regarding a source, though, I'm not sure what to provide except the whole of trademark law in the U.S. I'll point out that you're commenting on a case between two U.S. companies, so any UK or international laws you know are superficial at best. I certainly can't say that calling your software "army builder software" would infringe, but neither could a real U.S. PT attorney. That would only be decided in a court of law. What I can say, however, is that your advice that it's (essentially) ok is not sound. Note that I'm making the connection that when you say its "clearly not making commercial use" means that you say the person is not infringing. I think that's what you intended to imply.

 

[pedr]

Regarding a source, though, I'm not sure what to provide except the whole of trademark law in the U.S. I

Well surely a source would be an example of a case where the interpretation of the relevant Act you believe to be accurate is the reason for the case being decided in the way it was, which would indicate that the interpretation which S'mon (reasonably) puts on the words of the Act is not the currently accepted one among the judiciary.

As far as I can tell, S'mon's posted law to back up his interpretations and then been faced with people saying "that's not right". Which isn't very helpful, because S'mon doesn't strike me as wanting to be obtuse or stubborn in his opinions, and would presumably welcome pointers to sources (other statutes, the kinds of cases mentioned above, even journal/law review articles and text-books) which negative his propositions, if they are, in fact, inaccurate.

That's something of a digression for this thread, but not a great one: there seem to be three strands 1) Was Lone Wolf wise to act as it did? 2) Was Lone Wolf legally correct/entitled to act as it did? 3) Are Lone Wolf's understandings of TM law accurate? The answers to all three could be useful for Lone Wolf and other companies in the same position in future (not to mention Morrus and other forum hosts/operators reading!)

 

[Infiniti2000]

3) Are Lone Wolf's understandings of TM law accurate? The answers to all three could be useful for Lone Wolf and other companies in the same position in future (not to mention Morrus and other forum hosts/operators reading!)

Yes, this answer would be useful, but impossible to obtain unless counsel decided to post in this forum. I don't see any, however, so all we have are "internet people." These people (myself included obviously) are incapable of providing fact on this, regardless of how well informed. Not only that, but these people should NOT provide advice on courses of action except to go hire legal counsel. I say this because fact (i.e. law) is always left in the hands of the court to decide.

So, yes I know a little bit about trademark (and patent) law, enough to make me dangerous so to speak. I have experience in the U.S. court system with it, enough to make me believe my statements that S'mon gave bad advice (from a U.S. perspective). I neither can, nor will, provide example court cases. On one hand, I can't divulge the ones I am/was involved in and on another hand, I don't follow case law nor do I care to research it. If I had to guess, however, I would say about 50% of the trademark case law out there probably pertains to and supports my previous point.

Regarding Morrus, though, and this forum, that entirely depends on where this forum is hosted. I'm guessing in the UK which I think would make all U.S.-based trademark law comments irrelevant. U.S. trademark law doesn't apply to websites hosted outside the U.S., does it? See, now this area is where I think S'mon's expertise lies, though as a non-attorney he still shouldn't provide legal advice.

 

[S'mon]

Regarding a source, though, I'm not sure what to provide except the whole of trademark law in the U.S. I'll point out that you're commenting on a case between two U.S. companies, so any UK or international laws you know are superficial at best. I certainly can't say that calling your software "army builder software" would infringe, but neither could a real U.S. PT attorney. That would only be decided in a court of law. What I can say, however, is that your advice that it's (essentially) ok is not sound. Note that I'm making the connection that when you say its "clearly not making commercial use" means that you say the person is not infringing. I think that's what you intended to imply.

No commerce = no commercial use. The biggest stretch I can find of what constitutes commercial use was the finding by a New Jersey court in jewsforjesus.com that having paid-for advertising on a 'sucks' site constituted commercial use of the TM embodied by the domain name. That's still a far cry from "any freely available literary work" (which is what freely downloadable software is) is making commercial use of the mark embodied in its title. If that were the case, any speech would be commercial speech. Of course there are arguments you could raise in court "This work is affecting my business! Ergo it must be commercial!" but I wouldn't expect them to succeed.

I think you are kinda right that when I wrote "You can" I should have put "but I wouldn't advise it, because you may still be sued even though you haven't actually infringed the Mark". I didn't say that because my advice - don't sue - was directed to rightsholders like lonewolf. And as a practical matter, if eg you are a huge corporation that's a major local employer you may well win a case in a local court of first instance even without any legal basis - c'est la vie. That doesn't apply to lonewolf though.

 

[S'mon]

That's a key distinction (advice to rightsholder and not potential infringers) that is not present in your previous post. My take from your statement was essentially "feel free to use what you consider weak marks in your software name because they won't be able to prosecute you." This is terrible advice. Your previous statement is quoted again, below, for convenience.

"Prosecute" is a term in criminal law. You mean "sue"?

 

[S'mon]

Note that I'm making the connection that when you say its "clearly not making commercial use" means that you say the person is not infringing. I think that's what you intended to imply.

You do accept that the respondent/defendant making commercial use of the mark is a prerequisite for a finding of TM infringement under the Lanham Act, don't you?

 

[S'mon]

Regarding a source, though, I'm not sure what to provide except the whole of trademark law in the U.S.

That is not helpful to me, and it wouldn't get you far in a court of law, either.

Edit: I feel I may have been sucked into a "Someone is WRONG on the Internet!" discussion... :\

lonewolfdevel has supplied me with his lawyer's contact details, I expect he can give me a more useful response than what I'm getting here. Or I could crank up the Westlaw... *sigh*

 

[S'mon]

Well surely a source would be an example of a case where the interpretation of the relevant Act you believe to be accurate is the reason for the case being decided in the way it was, which would indicate that the interpretation which S'mon (reasonably) puts on the words of the Act is not the currently accepted one among the judiciary.

As far as I can tell, S'mon's posted law to back up his interpretations and then been faced with people saying "that's not right". Which isn't very helpful, because S'mon doesn't strike me as wanting to be obtuse or stubborn in his opinions, and would presumably welcome pointers to sources (other statutes, the kinds of cases mentioned above, even journal/law review articles and text-books) which negative his propositions, if they are, in fact, inaccurate.

Well said, thanks. This does make me realise I've been wasting too much time I could be prepping tomorrow's tutorials, or spending with my family.

 

[S'mon]

i neither can, nor will, provide example court cases. On one hand, i can't divulge the ones i am/was involved in and on another hand, i don't follow case law nor do i care to research it. If i had to guess, however, i would say about 50% of the trademark case law out there probably pertains to and supports my previous point.

lol.