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

[jaerdaph]

No. Post removed.

~ PCat

 

[roguerouge]

Yet another example of the unintended repressive consequences of trademark law. There ought to be a creative commons for trademarks as well.

 

[roguerouge]

And actually, the few posts from Lone Wolf developer tell me they are not as "evil" as some people are implying.

Tabletop Gaming News » Lone Wolf send Cease and Desist over Army Builder trademark

Asking admins to delete or rewrite stuff that people have written is, in fact, a form of inflicting harm. That it's legal and required by law means that the law should change, not that we should laud the company for doing so. That they fumbled the ball in 1998 with their trademarking is no reason to punish unwitting people today.

So, it's a banal form of evil, but still evil.

 

[Fifth Element]

This thread seems to have broken jaerdaph. So it was worthwhile after all.

 

[Xyxox]

Asking admins to delete or rewrite stuff that people have written is, in fact, a form of inflicting harm. That it's legal and required by law means that the law should change, not that we should laud the company for doing so. That they fumbled the ball in 1998 with their trademarking is no reason to punish unwitting people today.

So, it's a banal form of evil, but still evil.

The whole point is, they CANNOT require admins to delete or rwrite stuff people have written. There is no legal basis for that requirement.

You will notice that the admins of ENWorld have completely ignored it because the request is 100% rubbish.

Army Builder.

 

[Imhotepthewise]

<stripes>
General: What are you doing, soldier?
Tripper: Building, sir!
General: What kind of building, soldier!
Tripper: Aaaaaaarmy Building, sir!
</stripes>

 

[lonewolfdevel]

Once more unto the breech....

I had a very productive conversation with our IP attorney today and got clear on some important items. I'm not a lawyer, and I don't even pretend to play one on TV. So I messed up some terminology in what was intended as an informal message to Privateer.

I will now publicly eat my crow for the following errors:

First, use of the term "dilute" was incorrect in the context of genericization of our trademark. I should have worded that sentence differently. That was an error of not properly understanding the context in which certain terms apply, which I hopefully now do.

Second, invoking the DMCA directly was technically incorrect, as I should have referenced it by analogy. That being said, there has been recent case law that has applied the principles of the DMCA to trademark infringement. The judge in the case where Tiffany sued eBay said that eBay would have certain obligations once directly notified by the trademark holder, "similar to the way the safe harbor provisions of the DMCA works". In hearing about this from our attorney awhile back, I misinterpreted his comments, so I believed he had indicated we could now directly reference the DMCA.

Finally, and most importantly, the paragraph that insists all "improper references" to our trademark be edited or removed from our forums was not clearly worded. I should have used the term "infringing references" instead, since that was the intent. I had identified two issues in the message - direct infringement and generic use. I then outlined two actions, with the belief that clearly action #1 applied to issue #1 and action #2 applied to issue #2.

Since I used the term "improper", though, the paragraph could also be construed as encompassing all generic references to the trademark. This explains why people took exception to it. Unfortunately, that possible interpretation completely escaped me, and you can witness as much in my earlier posts where I asserted my interpretation of the paragraph - and its intent. So this was a very subtle, yet critical, error on my part, and anything but intentional.

From what I understand, it's that last item that has incited the uproar. I genuinely am sorry for the confusion on this, and I would have acknowledged this error immediately if I had recognized it. It was definitely a "Doh!" moment when it was made clear to me.

So, apologies to all for the confusion and indignation this has caused. Please believe that it was an honest mistake.

 

[Drkfathr1]

Kudos to you sir.

Real nice to see someone in the industry come forward and admit a mistake and do so with dignity.

 

[pawsplay]

Law and legal precedent, going back almost a century, disagree with you.

What does that mean?

Descriptive Marks were and are very common.

So?

Between the USPTO lawyers who review and the peer process once it goes into the marketplace, there are enough checks and balances.

No, there aren't. This part I get, but basically, you're wrong. I could trademark "John R Troy Donkey Bong" as a mark related to household cleaning products, and the USPTO would dutifully check to see if there were already any household cleaning products with a confusingly similar name. Assuming there were not, they would publish a notice you would never be aware of and they would give you thirty days to object.

I'm afraid I just have no idea what your point is.

 

[lonewolfdevel]

If I put up Mathew Freeman's Army Builder on my own web-space, and link to it from ENWorld, I would not imagine for a moment that an appropriate response would be to threaten Morrus with legal action. Come find me directly, if you will, and threaten me. A forum is an open discussion space, and the person supplying it shouldn't be under attack.

The owner of a site is ultimately responsible for the content on that site. In the case of copyright issues, the DMCA includes a "safe harbor" clause that ensures site owners can avoid legal implication. However, in order to gain the benefits of the safe harbor clause, the site owner must comply with any demonstrably valid claims of infringement. If the site owner elects not to comply, then he can possibly be held as complicit in the infringement.

The same basic rules apply to trademarks. I believe the term is "contributory trademark infringement". If a site owner is contacted about a trademark infringement (e.g. Matthew Freeman's Army Builder) on their site, they may elect to remove the infringing reference (i.e. a link to your site containing the name "Matthew Freeman's Army Builder"). If the site owner chooses not to do so, then it's possible for them to be held accountable for "contributory trademark infringement". The choice always resides with the site owner, but most site owners take content down immediately when infringement is demonstrated, since they don't want to risk liability.