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

[arscott]

Well, the USPTO disagreed with you in this matter.

The USPTO is notorious for being a lousy gatekeeper when it comes to patents. Why should I trust it's behavior in regards to trademark?

 

[aboyd]

Please note that I am *not* an attorney. I've talked at great length with our IP attorney, so I know a fair bit about this stuff, but it's distinctly possible that I'll not get something exactly correct.

As far as I can tell, you got many things horribly, horribly wrong -- and not just from a "you were a douchbag" level, as Morrus intimated, but also from a legal level. Here is some stuff to run by that IP attorney of yours.

First, your email to PP invokes the DMCA to protect your trademark (or more accurately, your wordmark). For those that don't get it, Rob invoked a copyright act to protect his wordmark. Here is a link that explains how the DMCA and trademarks/wordmarks are unrelated:

Trademark: User-Generated Content | Citizen Media Law Project

So on the face of it, the email is nonsensical, and in my case I would have done as the guys running EN World have suggested, and ignored it.

Having said that, let's go ahead and assume that your DMCA citation did apply (it doesn't, but you've tried to make it work, so let's play it out). The DMCA has very specific rules about how it works, and your rambling letter follows almost none of it. First, it doesn't follow the proscribed format -- this is actually meant to be a legal document, and the legal forms have been provided by the government, and you didn't use them. But additionally, the DMCA requires you to specifically cite each infraction and you didn't.

There is no law in place that says that a forum owner must assist in (or wholly bear the burden of) educating the forum members on another company's IP, yet you suggested this as part of your legal claim. I'm no lawyer, but doesn't that make this email of yours some kind of legal falsehood, Rob? Ask your IP attorney. Ask him to cite this law that he apparently believes would allow you to force other site owners to do your "educating the public" work for you.

So, we've got a messed up legal threat that doesn't even follow the very rules it cites. And this letter puts the burden of work on someone who is legally exempt from that burden. And this letter doesn't cite specific violations, so there is additional burden on the owner that at the very least, the DMCA says is your obligation Rob, not PPs.

Is it any wonder then that this wholly unrealistic letter which gets so much wrong is handled in a manner far beyond what usually happens with (proper) DMCA takedown notices?

I get a DMCA takedown notice for my forum that has a specific URL to a specific post by a specific poster, and I sigh and knock it out. I get a blanket, "figure out how to fix everything for us" email, and I'm going to do as Morrus implied -- shrug and say, "I can't read a million posts, and the law says I don't have to, sorry." Or, if I'd rather not bother with the legal back & forth, I'll just utterly obliterate anything to do with a company that is so sloppy with legal matters. I'd want no part of it. And look, that's kinda what PP did. I can't blame them, if I'd consider doing the same.

To me, that's what's objectionable about your handling of this, Rob.

EDIT: Steerpike7 beat me to this by over an hour. Shoot. I need to write my posts more quickly.

 

[Relique du Madde]

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

That's why I love Fair Usage's Satire Clause.

 

[Caedwyr]

Aren't there some fairly hefty monetary penalties for misuse of the DMCA?

Ah, here it is.
[www.law.cornell.edu]

(f) Misrepresentations.- Any person who knowingly materially misrepresents under this section-
(1) that material or activity is infringing, or
(2) that material or activity was removed or disabled by mistake or misidentification,
shall be liable for any damages, including costs and attorneys' fees, incurred by the alleged infringer, by any copyright owner or copyright owner's authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.

And a sample case

http://con.st/5398633

Diebold was found to have violated section 512(f) of the DMCA, and ordered to pay $125,000 in damages and fees—which is something you may want to point out to anyone who misuses the DMCA against your own online content in the future.

 

[Dire Bare]

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.

Sigh. How is "Army Builder" any more or less valid than "Player's Handbook" as a trademark?

Fact is, as JohnRTroy pointed out, "Army Builder" isn't all that different from tons of other legit, registered trademarks.

I'm not happy with how Lone Wolf has handled the situation here, but there is a lot of ignorance in this thread . . . .

 

[Dire Bare]

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...

I have and use all three of their programs. If they came up with a fourth product, I'd still take a look at it. I'm not happy with the way they've handled this affair, but I'm not ready to drop them at this point.

I'm sure I'm not alone.

This type of situation, regardless of the facts involved, <editing out fightin' words> gets a lot of folks to jump on the "STICK IT TO THE MAN" bandwagon.

A lot of folks have brought up some excellent, informed, and reasonable posts on several sides of this issue here in this thread. <edit> But there is a lot more unnecessary screaming going on . . .

 

[Relique du Madde]

Sigh. How is "Army Builder" any more or less valid than "Player's Handbook" as a trademark?

In the case of Player's Handbook, it's from the simple fact that no one disputed the trademark back the 1978.

Once something is established it can never go away unless it's not used.

 

[Dire Bare]

In the case of Player's Handbook, it's from the simple fact that no one disputed the trademark back the 1978.

Once something is established it can never go away unless it's not used.

Yup.

Same deal with Army Builder, just doesn't go back into the 70s.

 

[Tewligan]

The first thing that I need to make clear is that we never 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.

Well realistically, how could they have only deleted the references that fit that particular criterion? Is it reasonable to expect that they would read every single one of the thousands of posts on their forums, and hand-delete only the army builder references that are, in your opinion, incorrectly used? Within 72 hours, no less? Given the tone of your letter, and the time frame you gave them before you threatened to unleash the legal hounds, it's no surprise that they responded the way they did.

 

[Iron Sky]

Hm, not sure exactly why I just read this whole thread at 1:15 in the morning, but it's definitely interesting.

The following few quotations/sayings come to mind.

"The difference between the right word and the almost right word is the difference between lightning and a lightning bug." -Mark Twain

"Someone is WRONG on the internet!!!" xkcd - A webcomic of romance, sarcasm, math, and language - By Randall Munroe

"A reputation once broken may possibly be repaired, but the world will always keep their eyes on the spot where the crack was." -Joseph Hall

"There's no such thing as bad publicity except your own obituary." -Brendan Behan

Whether or not the last quotation is true anywhere else, I'm pretty sure it's very much NOT true on the Internet.