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

[Steerpike7]

I encourage you all to re-read the original message sent to Privateer and confirm this for yourself.

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.

In your initial letter you mention the DMCA, even though you are dealing with a trademark issue. Do you think the DMCA imposes a duty on Privateer Press or anyone else with respect to your marks?

Second, you talk a lot about dilution and the worry that your mark will become generic. But an action for Dilution has always required that a mark have a certain amount of notoriety, and the Trademark Dilution Revision Act of 2006 limited the scope of marks to which Dilution applies even further.

And even if your mark fit the standard, you're a long way from getting to Dilution from anything that happened in Privateer Press' forums. You need to read the Federal Trademark Dilution Act or talk to counsel who knows something about it if you think using a term in a discussion on an internet forum will get you there. Under Dilution you're looking at Blurring or Tarnishment, and if you look at the elements of either I think you'll see what I mean.

Privateer Press had a humorous response, in my opinion, and Lone Wolf Development deserves the egg it has on its face for going about this way. If my business received this sort of letter I'd be sorely tempted to haul the sender into Federal Court via an action for Declaratory Judgment and dispense with the nonsense in that fashion.

 

[Perram]

lonewolfdevel , I find your tactics and community engagement distasteful and I wish you no success with them.

Both with this issue and our previous issues together, you really need to work on your public relations techniques or at least get some one else to do them for you. And that opinion is completely appart to my feelings on this matter, and the previous, which as you know are negative.

The name of your product is incredibly generic. I thought that lent it a bit of charm, honestly, at the time I heard about it. But the name of your product is simply a description of the exact thing it does, so your fight against people using this term to describe similar programs is both futile AND hurting your public image.

This double talk your giving us now isn't helping either. You did threaten legal action, and you had a deadline in your missive, that's simple obvious to even a casual read of the letter. If that was unintentional, please see my above suggestion that you not act as the public face of your company if you can't make that a good face.

In short, you've lost my business, after having just won it back. And I will not be the only one you loose over this. I don't think it will be crippling, but I believe this action was a poor choice on your part and that there will be consequences for choosing this path.

 

[ExiledinElysium]

Well, the USPTO disagreed with you in this matter.

As for "army builder" being a common term long before the company existed, I invite you to provide any evidence of this. For example, you can check the archives on YahooGroups and look for the "direwolf_wh" forum. This forum was one of, if not "the", primary online group for discussion of the Warhammer Fantasy game from GW. The available archives only go back to 1999, but that was one year after we released the Army Builder product. Do a search for "army bulider". You will find no references to that term that are not specifically related to our product. There are many different terms used for roster construction in those archives, but the term "army builder" is not among them.

I'm just gonna concede this. I have no personal knowledge of whether it was a term used prior to Lone Wolf's product. I committed the deplorable fallacy of taking an assertion of several other people as fact. A few people on this thread have noted hearing the term as far back as the 80's. I don't know if that's true, but it doesn't sound like a stretch to me. The only personal knowledge I have is that I heard the term very early on in my Warhammer career, but never knew it was a product title. In my mind, the fact that it never occurred to me that "army builder" might be the title of a intellectual property should be evidence in support of the proposition that it's too generic to be trademarked. This sort of thing wouldn't have happened if the software had a name that sounded like a name. If it was called "List Nexus" or "Roster Monster" or anything else that sounds like something other than an intuitive and simple way to describe the product, I would have asked "what is that?" and would summarily have discovered the product with that title.

On that note, I'm pretty sure (though I could certainly be wrong) that the USPTO doesn't actually assess the validity of trademarks being registered. It seems intuitively stupid that they wouldn't, but given what I've learned about the structure of the American legal system it makes sense. In this country, the law (especially property law) doesn't really matter until there's a dispute about it. This is evidenced in things like the constitutional requirement of ripeness, and the several Supreme Court decisions disavowing the Court's ability to give advisory opinions. In the eyes of the Supreme Court, the judiciary isn't allowed to render a decision unless there is real concrete present controversy. As a result of this, we have things like the patent office not assessing whether a trademark is generic or not. If someone contests a particular mark's right to be a mark, a judge will have to investigate and decide, but until then it's nobody's problem.

Additionally, it seems to me that your employers just kinda got lucky. No other companies happened to contest "Army Builder," but that's probably because they didn't know the trademark had been registered and had no interest in using the phrase themselves since they had their own unique product names. If there were no other companies, then you just have a firm waving the legal stick at a bunch of nerds with mad excel skillz. That's great that Lone Wolf contacted all these small time developers and asked them to remove infringing content, but that's not a real test of the trademark's validity. None of those guys would even consider taking the issue to court to claim the mark is generic, since they don't know anything about IP law. They just get a notice from a company threatening legal action, and since they have no economic interest in what they've produced, the only sensible thing to do is comply. If an IP lawyer had been made aware of these small time cease and desist notices you talk about, I think we'd be looking at a different situation today. I know if this sort of thing were to happen in two years once I pass the Bar, I would file a dispute in a heartbeat. The fact that Lone Wolf is now trying to police this trademark wholesale now with their "incontestable trademark" certification feels a little ridiculous.

moving on...

never[/I] demanded that Privateer delete references to the term Army Builder that were used descriptively. The demand was that they edit or delete references used within the proper names of tools that were directly infringing on our trademark.

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.

Finally, why would it be so terrible in theory for a company's product name to become synonymous with the function? The fact that people came to associate Xerox with photocopying in general is a testament to the awesomeness that was/is Xerox, isn't it? Isn't the fact that we now have a drink flavor called "cola" just evidence that Coke was a really popular and successful product? Has the existence of RC Cola hurt Coke at all? Not anymore than any normal economic competition. Does it hurt Google when people say "I'm gonna Google that" then do a search on their preferred engine, Yahoo? Not at all; even if you educated them, all that would change is they would say "I'm gonna Yahoo that" before they get on their computer. On the other hand, the simple fact that your product has become the name of that product type gives you enormous market power (as a sidenote, I do have an economics degree so I'm not just talking out my rear). If someone wants to buy an army builder program, and they search that and find out that there's a program actually called Army Builder, you can bet your flaming hairpiece they're much more likely to purchase your product than that of a competitor.

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? Maybe I'm being stubborn, but I see about as much real damage here as I do in the Feminist Language Critique. In other words, zero. If you want to talk about whether Lone Wolf is harmed by the existence of 'some dudes excel sheet' at all, that's a different story entirely. It sucks for your boss that Jim Schmo is competing with Army Builder, but that's going to happen regardless of whether people call it Jim's Army Builder or Jim's Roster Monster, and it's going to happen regardless of whether people refer to army roster construction tools in general as army builders.

Cheers,

Kyle

 

[El Mahdi]

deleted

 

[Steerpike7]

I don't think the mark is generic. It's descriptive, in my opinion. I suppose they might have argued it was suggestive.

But yeah, I can't say I'm impressed by how Lone Wolf Development handled this.

 

[pawsplay]

For me, a lot of the issues are eclipsed by the fact they trademarked "army builder." Ok, no one objected during the 30 day window, and no one contested in the next five years. You got away with it. Good for you. It's a stinky cheese move, though. Does anyone think it's a coincidence these letters are going out now instead of, oh, a couple of years ago?

I have no kind words for people who abuse IP laws in this fashion.

 

[jaerdaph]

Well, thanks to this HUGE fiasco of a public relations NIGHTMARE that won't go away for a very long time and that they keep digging themselves into deeper, at least now I know who Lone Wolf is, and that Lone Wolf owns the trademark Army Builder®.

Too bad nobody around here is going to want to BUY Army Builder® or any of their products like Hero Lab® anymore...

Looks like Army Builder® is only good if you need to mass an army for a Pyrrhic victory...

 

[El Mahdi]

deleted

 

[Glade Riven]

"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.

It looks like a fairly obvious threat of legal action to me. I am curious, though, what Lone Wolf's response would be if Privateer Press had issued a similar statement towards Lone Wolf in regards to their linking downloadable extentions of Warmachine to be used with Lone Wolf products.

The choice of verbige and writing style in the initial "request" is intentionally hostile, rather than an appeal to find an equitable solution. This fiasco has certainly made it so that the product Army Builder will not be referance in Privateer Press forums. I don't blame Privateer Press for going the extra mile, as this prevents the need for future "requests" and documents that PP has been compliant should this be taken to court.

 

[Terramotus]

Lone Wolf is not White Wolf.

This is what I hate about "mob mentality". My bet is half the people commenting here never bought either a PP or LW product, yet now people are rallying to one and reviling the other. Ideology is worthless unless you get facts and make an informed decision.

Unfortunately, it's our best defense against corporate thugs who set out to use the legal system to chill free speech in furtherance of their own profits. Without the anger people forget and there are no consequences.

There was no direct legal threat in the message. The next step was that we'd have to get the attorneys involved. That's standard and I'm sure Privateer is quite familiar with the process. Apparently, many in the user community don't understand this and have lept to an interpretation that is pretty extreme.

Had we wanted there to be a legal threat, we would have had the attorneys draft a formal C&D letter. We didn't want to do that with Privateer. However, we did do it with a couple of sites that were using our trademark within the names of their tools (e.g. "Jim's Army Builder").

Sir, while this may not have been an official C&D letter, you insult our intelligence by claiming it was not a threat. Legal action was promised if your demands were not met. That sounds like a threat to me. If I threaten to kill a man if he refuses to give me his money, the knife need not actually be at his throat for the action to be a threat.

We never did that. We sought education - not regulation. In addition, there was no requirement that Privateer do anything regarding the education. We gave them that option to afford them complete control - if they so chose - but were prepared to handle it entirely ourselves.

Sir, how stupid do you think the members of this community are? Allow me to quote a relevant sections of the notice your company sent to Privateer Press. The emphasis, in bold, is mine.

In addition, this misuse by others has led to multiple posters on your forums using the term "army builder" to describe the category of tools. This needs to be remedied, and, under the Digital Millenium Copyright Act, we require your assistance in doing so.There are two things that need to be done. First of all, improper references to the Army Builder trademark on the forums must be addressed. This can be achieved in either of two ways, or potentially a combination of both, at your discretion. The first option would be to remove such posts. Since this could appear harsh and potentially disrupt forum discussions, an acceptable alternative would be to revise such posts to utilize a generic term (e.g. "roster construction tool", "list createor", or "points calculator") in place of the "Army Builder" name. The second thing that needs to be addressed is that your forum users must be educated about the term Army Builder being a trademark and only applicable to our brand of products. This is necessary to avoid an ongoing problem and mitigate the future need for removal of improper posts. I'm sure you would also prefer that the forums continue to run smoothly and without interruption, so your assistance in getting forum users to utilize appropriate terms will benefit us all.

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.

So, given that, I see three options you have to not appear like a mendacious shill for your company.

1) Revise your previous statement in this forum that you sought education, not regulation.
2) Issue a public clarification to Privateer Press that censorship of the public is not required.
3) Issue an apology to this community and start over, and hope your credibility as a spokesman has not been too far damaged.

However, I suspect none of the above will be done, as 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.