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

[ExiledinElysium]

So I'm a law student. I'm only in my second semester, and I haven't taken an Intellectual Property class yet, but from perusing what Lone Wolf has said about this situation, it doesn't seem to me that the person spearheading the effort has had any legal training. For example:

"...we are legally required to police our trademarks. We don't make the laws, but we do have to abide by them. Whether you agree with those laws is immaterial."

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.

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). Check out Pennoyer v. Neff. It's an old case that ruled that only newspaper publication of an intended property-based lawsuit was insufficient notice for the defendant party who lived in a different state. I'm not sure what that trademark information from the government site means when it says "published for opposition," but I'd be curious to know whether companies like Privateer Press were ever aware that this trademark was registered. The fact that none of us had even heard of Lone Wolf Development before today suggests to me that this notice was inadequate.

If this attempt by Lone Wolf to enforce their trademark control gets contested, I wouldn't be at all surprised if it resulted in a change in modern trademark law on grounds of notice under the Due Process clause.

Additionally, I'm thinking the "incontestable trademark" rule only applies to legitimate trademarks. The purpose of the rule (I would think) is to allow for the possibility of two independent entities accidentally coming up with the same or extremely similar marks. I'm pretty sure lack of opposition to a mark doesn't automatically make it legitimate; it still has to be something that is eligible to be trademarked. I don't think this country has a system like the UK whereby generic marks are never allowed registration in the first place. The US legal system prefers to address regulatory issues only in the context of actual disputes between interested parties, so they let anything register and if it becomes a problem it will be resolved in court. I'd be surprised if a court upheld Army Builder as a trademark, even with this weird five-year rule.

If I were to register the trademark "yogurt cup" or "nail clipper" and it just happened to go uncontested for five years, I would think it pretty absurd if I was suddenly allowed to bar anyone from using those phrases. Coca-cola is a trademark. LEGO is a trademark. Dungeons & Dragons is a trademark. Hell ENWorld is a trademark. These are all titles. Army Builder is not a title, it's a description of function. It's a tool to help you build an army for a wargame. If they wanted a trademark, they should have called it "Roster Monster" or something. The simple fact is that people have been using the phrase "army builder" to refer to these sorts of tools since long before Lone Wolf even existed as a firm.

Time for me to get to my Property class.

Cheers,

Kyle

 

[deadsmurf]

Rather than just mindlessly "stick up for the underdog", I decided to do a little research. Here is the information from the free on-line USPTO.GOV site.



This tells me a few things.

1) They've been using it in their products since 1998.
2) The registered it in 2004. There was no opposition.
3) They've had the Federal Registered Trademark for 5 years. Having it for 5 years gives you special privilages. According to Wikipedia under United States trademark law - Wikipedia, the free encyclopedia



Bold is mine.

It sounds to be like these guys won the Trademark fair and square. I don't see them doing anything unethical or questionable at all. They did their due diligence and nobody opposed their registration.

I don't see their C&D statement doing anything wrong and in fact just trying to make other publishers aware that they spent time and money registering this trademark.

Stopping a company from using "Army Builder" to refer to their product is one thing, trying to stop regular people from using a trademarked term to refer to another product is another. They can't stop you from saying "I need to Xerox that document" or "There are a bunch of types of Aspirin over in that aisle" or "I'm going to Photoshop that picture in Paint Shop Pro later" ... they might not like it that Kleenex is a generic term for tissues, but there it is.
Privateer press is obligated to stop using the term Army Builder themselves, but really have no real reason to stop their users from using the term to refer to Army Designing software.
If 5 years hadn't passed, then there is NO way that the trademark would stand up in court... but too late now.

 

[ExiledinElysium]

@deadsmurf - you bring up a good issue, but I want to clarify it a bit. You're right that a trademark owner can do diddly squat to prevent the genericization (that's a wonky word) of their name in casual verbal conversation, but that's not because they're not technically allowed to. I'm not positive on this, but I'm pretty sure the only reason we don't worry about people using xerox as a verb for general copying is because it's totally unenforceable. However, a legitimate markholder definitely can control the use of its mark on the internet. If Lone Wolf does indeed have this trademark, and it's legitimate, they have every right to ask that improper uses of it be removed from forums online; it would be the same thing as asking a printed magazine to remove improper uses of the term from an article. Though as I said above, they don't have a duty to enforce their trademark, that's just ridiculous.

 

[Buttercup]

Hey, let's go build an army of plastic minis! That would make us Army Builders!

 

[Turtlejay]

I had developed a unique garment that one wore on one's head. I tried calling it "headwear", but . . .everyone kept using my trademarked term inappropriately!

One thing I have not noticed yet in the comments is the strange practice of going after forum posts. AFAIK, the owner of a message board (or the writer of an article with comments, or the poster of a youtube video with comments, etc) is not liable for any of the content on the board.

In other words, Privateer Press has no legal obligation to police its board and watch out for 'illegal' use of the phrase Army Builder.

At least in the US. I wish I could remember where this immunity came from, but there *is* a specific (Clinton-era?) law that protects Service Providers and Website owners from user generated material.

Also:
Army Builder
Army Builder
Army Builder
Army Builder
Army Builder
Army Builder
Army Builder
Army Builder
Army Builder
Army Builder

Jay

 

[Piratecat]

I hate the current intellectual property laws.

Can I say that, or is the phrase "I Hate The Current Intellectual Property Laws" someone's trademark?

Yair (TM) (C)

Sorry. I actually trademarked "Yair" years ago. I must ask you to cease and desist using it, or I'll be forced to hire some sort of ARMY BUILDER to assemble a rag-tag mercenary enforcement team. Be warned!

 

[Tale]

Though as I said above, they don't have a duty to enforce their trademark, that's just ridiculous.

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.

 

[JohnRTroy]

I'm going to post the two posts from the President of Lone Wolf from those linsk above, because I think it will be relevant, and I think some people are too lazy to leave ENWorld.

The following is a re-post of a message I posted earlier on our product forums. I’m duplicating it here in the hopes that this will dispel some of the misunderstandings of the situation that seem to be visible in a variety of forums. -Thanks.

As many of you have probably heard, Lone Wolf Development sent a message to the forum administrators of Privateer Press. Some people have characterized it as a formal Cease & Desist letter, but it was actually a post to the admins written by me and not by our attorney. The subject of the message was to put a stop to what had recently become rampant misuse of the Army Builder trademark on the Privateer Press forums. This post presents an explanation of what occurred and why it was necessary to take such action. Please feel free to post any questions here in this thread and I’ll do my best to answer them.

The issue centers on the term “Army Builder”, which is a Registered US trademark that we first began using as a product name in 1998. At that time, there were a variety of terms used for the handful of game-specific, freeware tools that existed, but the term Army Builder was not in use. The subsequent success of the Army Builder® brand ultimately made the term Army Builder ubiquitous within the industry. Those 12 years of hard work have paid off, but they have also created a problem.

Due to our success with the Army Builder® brand, there have been a number of fan-created tools that their creators chose to name something along the lines of “Jim’s Army Builder”. Since they weren’t aware of the legal implications of using the name (we assume), they chose a name that everyone already recognized as synonymous with the creation of rosters for a miniatures game. Unfortunately, this represents a direct, although unintended, infringement of our trademark rights and, if left uncontested, could result in the trademark being lost.

However, there is a second problem that has arisen. The problem stems from an issue called “trademark genericization”. If a trademark is allowed by its owner to become a household word that is used to generically refer to the domain of the trademark, then the trademark can be declared to have become “generic”. If that happens, the trademark is lost and absolutely anyone can begin using it. Familiar examples of this include such terms as aspirin, thermos, and yo-yo. Each of these terms was originally a trademark, but the company owning the trademark was deemed to have allowed it to become genericized, which resulted in the trademark being lost.

Due to the above two issues, it is the responsibility of every company to police the use of its trademarks. The process of policing a trademark entails periodically sweeping all available media to identify situations where the mark is being used improperly (i.e. calling in-line skating “Rollerblading”, or calling all adhesive bandages “Band-Aids”, etc.). Partly, this is accomplished through marketing and public education. In addition, though, if a trademark owner discovers that a mark is used improperly, they are within their rights to contact the person responsible and ask that the improper usage be corrected. Indeed, to fail to do so can be grounds for losing the trademark rights. So a trademark owner has no choice in this – either the mark is policed everywhere or the good will they have worked so hard to acquire for their brand can be lost.

So what happens with internet forum sites? Does a trademark owner need to individually contact every person on a given site and convince them to use a trademark properly? And what if an individual refuses to cooperate? How does this impact free speech? With regards to free speech, anyone is personally allowed to observe or ignore trademarks in what they say to others. However, what is said on an internet forum is ultimately under the control of the site owner. As such, when there is a problem with users on a forum site, the correct action is to contact the site owner and enlist their assistance. Site owners are obliged to assist, especially where infringement is taking place, or could be deemed as complicit and face possible liability.

Let’s bring this back to the original issue wherein we had to insist that Privateer Press take action. First of all, there were a few users on the forums who had created their own tools for which they elected to use the brand name Army Builder®. Most likely as a result of this, a significant number of users on the forums also began using the term “army builder” in a generic fashion to describe all roster construction tools. This was a major problem brewing for us with regards to our trademark.

Two things were needed to rectify this situation. First, removal of all references to the other tools that were improperly using the name “army builder” was required, since those were instances of direct and actionable infringement of our trademark. Second, we asked for the assistance of Privateer Press in educating the user community that the Army Builder® brand name can only be used in conjunction with the Army Builder® brand of products from Lone Wolf Development, and that a suitable alternative term needed to be used to generically refer to the various fan-created tools. Acceptable alternate terms would include “points calculator”, “list creator”, or “roster construction tool”.

It’s regrettable that this action was necessary, but trademark law is very clear on this. If we opted to not police the improper use of our trademark on the Privateer Press forums, the extent of the problem would likely reach a level where we stood to lose our valuable intellectual property rights. That was not an acceptable option.

PLEASE NOTE! Anyone is absolutely welcome to write their own roster creation tools – we have no desire to suppress other people’s creativity. We simply require that everyone refrain from using the “Army Builder®” trademark when doing so.


Saying “an army builder” in a public forum does represent misuse of the Army Builder trademark. If it becomes a common practice, it’s a problem for us, so we have to actively police this. What you say among your gaming group is up to you. What goes in print is an issue. This is described in greater detail in my post above.

The Army Builder data files exist at the discretion of the game publishers. If a publisher were to request it, we would stop supporting their games. That hasn’t happened in 12 years, which means that the game publishers view Army Builder as an added value to their games. This reality is further borne out by scores of retailers that have, without exception, told us that Army Builder increases their sales of the games it supports. The reasons for this are many and I’ll be happy to outline them if anyone is interested.

The safe harbor protections of the DMCA are contingent upon a site owner acting immediately to remove content that is reasonably demonstrated to be infringing on someone’s intellectual property. As such, the site owner must either comply or risk being deemed complicit.

The demands of the message to the Privateer admins amounted to correcting what had been done (or deleting it). Nothing more. We also asked them to assist us with educating users, since that was likely something they wanted to control, and insisted that they tell us how they intended to proceed. No demands were placed on Privateer to police future use. That onus falls upon us alone. No demands were made for massive deletions, as alternative solutions were clearly made available. For those of you making these outlandish claims, I have to wonder if you actually read the message or are simply repeating wrong information you heard elsewhere.

Trademarks are limited to a specific domain of use. Consequently, multiple companies can possess the exact same trademark, provided each applies to a different domain. The rights ascribed to the trademark are limited to that domain. The Army Builder trademark is applicable to “computer programs used to facilitate the design and construction of army rosters and assist with record keeping tasks common to most miniatures war games. Consequently, the use of the Army Builder trademark in other domains is irrelevant.

 

[Morrus]

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.

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.

 

[Infiniti2000]

Trademarks are category specific--That's why you can have both Skippy peanut butter and Skippy dogfood in the same supermarket.

Not quite true. You can (and will) be sued even across categories if usage is deemed to be disparaging. For example (from my law book), if you created a line of sex toys called Microsoft, you can bet yer ass the real Microsoft would come knocking.