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

[Saeviomagy]

I'm just going to have to say this.

I don't care if it's legal. Trademarking something like this makes you a douche. Enforcing it makes you a douche twice over.

And yes, that goes for every instance where someone's done the same.

 

[lonewolfdevel]

While I do not care wether you have a trademark for army builder or not, you must know that what you wrote above is wrong, if you where ever into miniature games before. I don't know if there was specifically software called that, but it was certainly in the description of alot of things that helped you to create armies.

I started playing miniatures games in the early 90s and the term was not used in any environment I participated in. I gamed with multiple groups across the US in the mid-90s and don't remember encountering the term. I also participated on a number of online forums focused on miniatures games and I think I saw the term used once. Our IP attorney was an avid wargamer from back in the 80s and he definitely believed the term was valid to pursue as a trademark. In past conversations, he has said that he doesn't remember hearing the term used, and we're on opposite ends of the US.

Now, I'm not saying that the term wasn't used anywhere. I'm simply saying that it was not used widely enough to make the radar of myself, our IP attorney, or the USPTO examiner charged with vetting the mark.

So what I said was accurate, to the best of my knowledge. In all the circles I interacted with, the most common terms were "creating a list" or "making a list", sometimes with the word "army" inserted.

 

[lonewolfdevel]

I don't think trademark law means what you and LoneWolfDevel think it means. LoneWolfDevel's attempt to shut down the use of the term on message boards is an innacurate application of trademark law.

I think the confusion is now resolved. Please see my earlier post (#257) about the source of the confusion.

 

[Steerpike7]

Once more unto the breech....



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

Didn't want to quote the whole thing, but it seems to me this is an admirable, professional post. Not many companies I've dealt with would post this under these circumstances.

 

[Morrus]

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.

This isn't entirely true. It is true that there are situations whereby a site owner can be liable for infringements, but the scenario you posit is not one of them.

"Contributory Trademark Infringement" is most often used in reference to manufacturers and distributors of goods (a web forum does neither of these things). There have been some cases involving ISPs with varying results; to my knowledge there have been none involving web forums.

You may be thinking of Vicarious Infringement, which has involved web forums in the past; but in those cases there needs to be a partnership between the web forum and the infringer with intent to distribute actual content via that forum (i.e. actually download the digitial files from the forum itself).

However, on a page such as your own Army Builder data files page (where you yourself have linked to data files which infringe various companies' IP rights - including Babylon 5, Starship Troopers, Lord of the Rings and many more), there is a case. You are certainly far more at risk than any web forum is.

Of course, I don't know that you don't have an arrangement with the companies in question regarding that; you may well have for all I know (and you certainly don't owe me an explanation).

 

[JohnRTroy]

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.

I guess I don't understand either, because what I am saying is that it is not wrong to combine words and make them a unique statement. I'm saying this goes back almost 100 years. And unlike copyright law, which was changed and extended over time, and patents, where things might have gotten crazy, this thing goes back to its inception.

John R. Troy Donkey Bong is not a valid trademark because you can't make a Trademark out of part of a living person's name without their permission (and for some reason until the widow of a President of the US dies), and that's not counting the rights of the estate, etc. (And there are other John R. Troy's, so if one of them wants one, go ahead)

Keep in mind Trademark is very narrow.

• It can only prevent the use in the specific instance of commercial products, or limited non-commercial use that might cause some specific confusion. I can talk about Chef Boyardee but I can't put it on a can. This is why Trademarks exist, to protect us.
• The USPTO has many different segments. In many cases the areas are narrow. There could maybe 12 or more other Army Builders, as long as consumers wouldn't be confused. Somebody could make a clay mold set that makes Army men and call it Army Builder.

Like I said, stuff like Coca Cola was a combination of two common words. Doubling nouns, nouns with adjectives, etc., are all done. To complain that it's "stupid" is kind of unfair, if you at least study trademarks. It was enough to get put on the Principal Register. Suggesting that somebody was engaging in shady, unethical, or "douche-y" behavior is a little disparaging. And note that it's not just "six months", some trademarks take years to approve. Google still doesn't have Federal Registration, for instance.

I've got no problem with the complaints that Lone Wolf was over-zealous. But saying "Army Builder" is a bad name is a little over the top. There are hundreds of names like this--the reason they are allowed is because there are literally millions of trademarks--there's only so many permutations to the English language you can do. Which is why such things are allowed. (And part of a rule of branding is the shorter the brand name the better).

 

[Terramotus]

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

I applaud you for having the guts to say that publicly.

I still don't see how the letter could have been understood any other way than the way most readers seem to have read it, since you defined the term "improper" further up in the letter... but I'm going to accept your word and take the apology at face value.

In my mind, your actions are now downgraded from Reprehensible to merely Distateful, but Understandable. I still disagree with the extent to which you seek to put the onus of active continued enforcement on Privateer Press, and the fact that your company is actively seeking to enforce such a weak Trademark, but I can now do so politely, and I can understand your position even if I disagree with it.

I submit to you that an open letter to Privateer Press posted on your website with the clarifications you've listed here might do you a lot of PR good.

As a side note, regardless of whether or not individuals are attorneys or have professional legal knowledge, they still have the ability to identify results that they disagree with or believe are unethical, and are completely justified in judging a business's actions on those merits. It's still insulting to imply that without a law degree they are unqualified to have an opinion of the situation. Further, there is room in the world for businesses that are good corporate citizens and decline to take action that while technically legal may still be unethical or undesirable for the society they exist within.

So coming in here and taking all this heat is an attempt to whitewash the situation? Seriously?

I'm just going to take a few deep breaths, fight the urge to bang my head on the wall, and move on to the next post.

In this age of the content cartels seeking to ruin people's lives over small-time piracy, patent troll companies who never made or contributed a thing to anyone making millions through lawsuits, and large media companies seeking to hold in their dominion forever works that should rightfully be part of our collective cultural heritage, all through cynical abuse of the legal system...

Yeah, that's a reasonable assumption. There are a number of people who get paid to do nothing but that.

Not to mention the fact that your arrival in the thread immediately stopped most of the irreverent shouting of "army builder!" So you did have a chilling effect on speech here, regardless of whether or not it was intended.

I'm glad to see that your motives were apparently genuine.

 

[Xyxox]

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

I'll accept this. To quote J.K. Rowling, "It's easier to forgive others for being wrong than for being right."

I have no problems with somebody appropriately protecting their intellectual property.

 

[lonewolfdevel]

I still don't see how the letter could have been understood any other way than the way most readers seem to have read it, since you defined the term "improper" further up in the letter... but I'm going to accept your word and take the apology at face value.

When the message was first drafted, I had the issue of infringement completely addressed first (issue and action), and then the issue of genericization separately (issue and action). So in my mind, the two were clearly separate matters. The word was still wrong in this case as well, but its visible context as "action in response to infringement" should have at least caused the reader to question whether we were serious about the word "improper" when the paragraph its in reference to was discussing "infringement".

I submit to you that an open letter to Privateer Press posted on your website with the clarifications you've listed here might do you a lot of PR good.

It's already been drafted, but god help me if I post that before having it thoroughly checked by multiple people for stupid errors.

As a side note, regardless of whether or not individuals are attorneys or have professional legal knowledge, they still have the ability to identify results that they disagree with or believe are unethical, and are completely justified in judging a business's actions on those merits. It's still insulting to imply that without a law degree they are unqualified to have an opinion of the situation. Further, there is room in the world for businesses that are good corporate citizens and decline to take action that while technically legal may still be unethical or undesirable for the society they exist within.

Valid point. Please understand that I've been in a high-stress situation and operating with little sleep. Combine that with the fact that I couldn't understand why people were so upset. So my frustration leaked through a few times. Sorry about that.

Not to mention the fact that your arrival in the thread immediately stopped most of the irreverent shouting of "army builder!" So you did have a chilling effect on speech here, regardless of whether or not it was intended.

Really? I didn't notice a difference, since it appeared to continue after I came on here. Perhaps I just overlooked the levels, as those posts were just "noise" to me.

 

[pawsplay]

I guess I don't understand either, because what I am saying is that it is not wrong to combine words and make them a unique statement. I'm saying this goes back almost 100 years. And unlike copyright law, which was changed and extended over time, and patents, where things might have gotten crazy, this thing goes back to its inception.

I'm waiting to hear a counter-argument I disagree with.

John R. Troy Donkey Bong is not a valid trademark because you can't make a Trademark out of part of a living person's name without their permission (and for some reason until the widow of a President of the US dies), and that's not counting the rights of the estate, etc. (And there are other John R. Troy's, so if one of them wants one, go ahead)

But your name is not John R. Troy Donkey Bong, and I am not selling donkey bongs. I can very easily trademark such a name, just as I could trademark John Smith Easy Grill or somesuch. Now you would be welcome to claim I am implying affiliation with you, and that this somehow matters, or that I'm denigrating you in some way, but that would be a separate issue.

I could do it. There are legal challenges that could be raised. They are, however, much weaker than the case against Army Builder. John R Troy Donkey Bong is a nonsense phrase.

Like I said, stuff like Coca Cola was a combination of two common words. Doubling nouns, nouns with adjectives, etc., are all done. To complain that it's "stupid" is kind of unfair, if you at least study trademarks.

So what do you say about the guys who tried to trademark acai?

It was enough to get put on the Principal Register. Suggesting that somebody was engaging in shady, unethical, or "douche-y" behavior is a little disparaging. And note that it's not just "six months", some trademarks take years to approve. Google still doesn't have Federal Registration, for instance.

I've got no problem with the complaints that Lone Wolf was over-zealous. But saying "Army Builder" is a bad name is a little over the top.

Why? It's nothing I would ever considering trademarking. It's a bad name.

There are hundreds of names like this--the reason they are allowed is because there are literally millions of trademarks--there's only so many permutations to the English language you can do. Which is why such things are allowed. (And part of a rule of branding is the shorter the brand name the better).

None of which is relevant to naming your product for what it does, then trademarking so other people cannot describe similar products in the same succinct fashion. As far as I know, "army list calculator" is the only synonym that has any traction as a useful alternative. What happens when someone trademarks Army List Calculator? Then where are we?