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



## Ghostwind

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

Apparently Lone Wolf is sending out C&D letters over the use of the term "Army Builder" including use of it in forums.


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## Nifft

Those letters sound like an *army builder*, building an army of resentment against their company.

Oh well, -- N


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## El Mahdi

deleted


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## renau1g

They don't get paid for their good looks


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## Ghostwind

Rob from LWD tries to explain why they went after Privateer Press.

Unfortunate Developments with Privateer Press - Lone Wolf Development Forums


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## Crothian

I thought this had something to do wit the lone wolf RPG.


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## jdrakeh

n/m


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## El Mahdi

deleted


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## darjr

Lone Wolf Development

They also make hero lab. So it's tangentially important.


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## Dire Bare

Ghostwind said:


> Rob from LWD tries to explain why they went after Privateer Press.
> 
> Unfortunate Developments with Privateer Press - Lone Wolf Development Forums




If I read that correctly, Lone Wolf has NOT sent any C&Ds.  They simply sent a letter to Privateer Press to ask them to help police their trademark, "Army Builder".  Lone Wolf is certainly within their rights to protect their trademark, the program IS the most popular tool for miniature wargamers and has been for years.   "Army Builder" is just as a legitimate trademark as "Player's Handbook".


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## JoeGKushner

Initial problem would be making Army Builder, a fairly generic terms here, as a brand as opposed to making a unique name. I suspect they'll find this an uphill battle.


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## Glyfair

JoeGKushner said:


> Initial problem would be making Army Builder, a fairly generic terms here, as a brand as opposed to making a unique name. I suspect they'll find this an uphill battle.



Yeah, I'd have to dispute their "because of us the term is popular" claim.  I know I heard that term used around the gaming stores at least as far back as the 80s.


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## pawsplay

I'm going to suggest that Army Builder is only barely more than descriptive. "Army building" is a common term from the wargaming hobby. It would be like trying to trademark Skip Rope for your brand of jump rope; it might be granted simply because there are no competitive trademarks, but so what?


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## Grimstaff

SO, "we've spent 12 years building the brand called Army Builder, so anyone else who uses the term Army Builder is making the term generic"!?

Hahahahaha

Next someone will start suing over the term "Rulebook"...


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## Krensky

Obviously they need real IP lawyers. They trademark a common descriptive phrase (they named their software what it does) and then they cry foul when people use that term for any software that does similar things. This would be like naming your word processor, I don't know, Word Processor and then complaining that people are diluting your trademark.

The Grandma rule prevents me from fully expressing my full opinion of this.


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## Mephistopheles

Rob said:
			
		

> 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.




It's tempting to argue that the trademark was generic when they registered it. As someone else mentioned, it's a term that was already in use and it could be looked upon as Lone Wolf trying to use that to their advantage: if I'm looking for software to build an army with I expect I'd enter "army builder" rather than "roster creation tool" into my search engine of choice. It seems a little like wanting to have your cake and eat it too.


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## Obryn

This part here...



> 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.




...is the stretch.  I've never heard of an actual program called Army Builder, but if I were to make a program for building miniatures armies, I might call it something like Obryn's Army Builder.  "Army Builder" is the function of the program - not a proper title.

And you can see later in the same post where I think the author realizes what a corner he's painted himself into...



> 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".




...because these are somehow descriptive and generic terms whereas "army builder" is not.  It's nonsense.  People don't use the phrase "army builder" because of Lone Wolf's program.  They use it because that's exactly what their self-made program _does._  If you stand around a table and ask people to "build their armies" it's not a veiled reference to their program - it's what the players are _doing._

This happens with other rather generic names, too.  Witness the actions of both Monster Cable and Monster Energy.

-O


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## kinem

Yeah ... never heard of Lone Wolf but now I'll be sure never to do business with them.  I think I'll make a program called Army Builder though, that sounds cool.


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## N0Man

I am surprised that something as generic as "Army Builder" was successfully trademarked, rather than "Lone Wolf Army Builder".  I wonder if it would stand up to any challenge.

However, that said, if they own the trademark then they are certainly within their rights from objecting to someone using that trademark for another product as long as that trademark is upheld.  They can ask others not to use that phrase in their software as well.

However, there's not much they can say to prevent the average person who is not affiliated with a piece of software from referring to it as an 'Army Builder', as far as I know.  You can't stop people from discussing something that is trademarked, or making a comparison to something that is trademarked.

In other words, you can stop people from saying, "Hey, come check out my Army Builder called Jimbo's Extreme Army Builder", but you can't really stop someone from saying, "If you are looking for an army builder, I hear that Jimbo's Extreme Army Designer isn't bad."

It's also funny that while trying to protect this laughably generic trademark name, they are marketing a program to be used with many trademarked games.  I wonder if any of the names and content in their program violates trademark also....


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## S'mon

The US Trade Marks office really registered that?  You guys will register (& Patent) anything!  I can't see that getting registered in the UK.  Nor 'Player's Handbook', BTW.


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## Terramotus

Man, screw them.

The way to become a good company, one that people admire, love their products, and desire to support is through great products and great customer service.

Instead, they've chosen to abuse the legal system to hinder their competion's ability to get their product out.  Not only that, but they want to be the word police to force you to go along with their scheme to co-opt a chunk of the english language.  The idea that they somehow invented the term "army builder" is so absurd as to be insulting.

Not only will I never purchase their products, but I'll do my best to discourage anyone else from doing so as well.


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## ShinHakkaider

Wow. I'm a big fan of their HeroLab (am I allowed to type that here?) software but I gotta say this sounds like a real douchey move on their part. I understand the need to protect IP and all that but, wow. I'll keep using the product that I've bought but I dont know if I'll be giving any more of my money to this company.


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## Dragonhelm

*Two Words:*

Super Bowl.


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## DaveMage

Dragonhelm said:


> Super Bowl.




Super Bowl Army Builder!

Fantasy Football taken to a whole new level!!!!


I guess if they spent the money to register the trademark they would want to defend it, but, yeesh - "Army Builder"?  Weak.


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## Mikaze

Well, off to make an Army Builder sandwich.  It'll be fun to decide how one is made, as I have just invented it.


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## Hand of Evil

Armed Forces Builder
Militia Builder
Band of Soldiers Builder

Oh, those are now trademarked under my name.


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## Alaxk Knight of Galt

Dragonhelm said:


> Super Bowl.




Don't make Morrus contact you personally!


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## pawsplay

As far as I know, simply having a registered trademark does not mean the trademark office is affirming your right to have it, just that you registered it first and they didn't see any reason to block the registration.


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## Morrus

Dragonhelm said:


> Super Bowl.




Can you explain what you mean to us non-Americans?  Was there a similar trademark situation there?


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## S'mon

pawsplay said:


> As far as I know, simply having a registered trademark does not mean the trademark office is affirming your right to have it, just that you registered it first and they didn't see any reason to block the registration.




In the UK under the TMA 1994 they'll refuse registration of generic marks, those which are purely descriptive or laudatory.


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## Alaxk Knight of Galt

Morrus said:


> Can you explain what you mean to us non-Americans?  Was there a similar trademark situation there?




From wikipedia



> The NFL claims that the use of the phrase "Super Bowl" implies an NFL affiliation, and on this basis the league asserts broad rights to restrict how the game may be shown publicly; for example, the league says Super Bowl showings are prohibited in churches or at other events that "promote a message"; and venues that do not regularly show sporting events cannot show the Super Bowl on any television screen larger than 55 inches. Some critics say the NFL is exaggerating its ownership rights by stating that "any use is prohibited", as this contradicts the broad doctrine of fair use in the United States.




What it ultimately means is that you get a lot of references to the "Big Game" or a "Super Party" in advertising.  For example, Best Buy might push for you to get a new TV in time for "The Big Game."


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## Rodrigo Istalindir

Alaxk Knight of Galt said:


> Don't make Morrus contact you personally!




He doesn't get his hands dirty with such things.  He'll just sic the Attorney-General of London on you.


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## Perram

This is absolutely rediculous.  This and their rather cavaleer stance on their absurdly restrictive DRM software completely put me off.  This company may make some decent software, but it isn't worth doing business with them.

And Army Builder?  They made their own mistake when they trade marked that phrase, because it is too generic to possibly enforce as strictly as they seem to want to.

(1 install every 6 months per product key, and if you have a violation, which their own patches have introduced on occasion, you have to email them and wait for a response that takes several days to be answered, in the mean time, your software is crippled.)

Quit doing business with these people, and don't cooperate with their absurd demands.


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## Mustrum_Ridcully

Perram said:


> This is absolutely rediculous.  This and their rather cavaleer stance on their absurdly restrictive DRM software completely put me off.  This company may make some decent software, but it isn't worth doing business with them.
> 
> And Army Builder?  They made their own mistake when they trade marked that phrase, because it is too generic to possibly enforce as strictly as they seem to want to.
> 
> (1 install every 6 months per product key, and if you have a violation, which their own patches have introduced on occasion, you have to email them and wait for a response that takes several days to be answered, in the mean time, your software is crippled.)
> 
> Quit doing business with these people, and don't cooperate with their absurd demands.



Not that it matters for people constructing military units, but it seems that WotC policies with their character and monster builders are a lot better than Lone Wolf's.  

Seems the spectrum for software policies in the gaming industry is a lot wider then I knew.


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## Runestar

Superbowl is copyrighted?

So hypothetically, if I had this really great bowl I wanted to term "The super bowl"...


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## Dragonhelm

Hand of Evil said:


> Armed Forces Builder
> Militia Builder
> Band of Soldiers Builder
> 
> Oh, those are now trademarked under my name.




Beat me to it!  




Alaxk Knight of Galt said:


> From wikipedia
> 
> 
> 
> What it ultimately means is that you get a lot of references to the "Big Game" or a "Super Party" in advertising.  For example, Best Buy might push for you to get a new TV in time for "The Big Game."




Thanks for posting that.  

Basically, the NFL doesn't want anybody using the phrase "Super Bowl" other than them, even though it has entered the common vernacular.  So you often hear radio personalities making light of the situation by calling it things like "the big game" or "the end-of-the-year championship game."  It sounds silly to say that instead of Super Bowl, and all this does is cause a negative image of the brand in the mind of consumers.  Granted, people are so into football that it won't cause them any financial distress.  Still, the possibility is there for them to do more harm than good.


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## jaerdaph

*Really Slow News Day @ EN World?*

Who the Hell is Lone Wolf and why are we supposed to care now? 

Don't get me wrong and all - this is clearly the worst thing to happen since 9/11 and the release of _Your Favorite System_™, especially judging by its prominence on the front page of EN World. IMHO, IANAL, IYKWIMAITYD, but I'm still ready to go off all half-cocked over this and all in any direction if you need me to, but I do have a lot of hating I could be doing on _Your Favorite System_™ instead. Lemme know so I can schedule the rest of my day of not getting laid or having a life. 

Thanks!


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## Rykion

Wow  So they don't want people to generically use the name of their generically named product.  I guess they should have thought of a less generic name.  

I can see them going after people/companies that put out competing products that use army builder in their name or advertising, but to go after your target audience for using the term is just stupid.


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## JohnRTroy

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.



> Word Mark	ARMY BUILDER
> 
> Goods and Services	IC 009. US 021 023 026 036 038. G & S: COMPUTER SOFTWARE, NAMELY COMPUTER PROGRAMS USED TO FACILITATE THE DESIGN AND CONSTRUCTION OF ARMY ROSTERS AND ASSIST WITH RECORD KEEPING TASKS COMMON TO MOST MINIATURES WAR GAMES. FIRST USE: 19980131. FIRST USE IN COMMERCE: 19980613
> 
> Mark Drawing Code	(1) TYPED DRAWING
> Serial Number	76502421
> 
> Filing Date	March 24, 2003
> 
> Current Filing Basis	1A
> 
> Original Filing Basis	1A
> 
> Published for Opposition	 February 3, 2004
> 
> Registration Number	2836150
> 
> Registration Date	April 27, 2004
> 
> Owner	(REGISTRANT) Lone Wolf Development, Inc. CORPORATION DELAWARE 42058 John Muir Drive Coarsegold CALIFORNIA 93614
> 
> Attorney of Record	Robert A. Lippman, Esq.
> 
> Disclaimer	NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "ARMY" APART FROM THE MARK AS SHOWN
> 
> Type of Mark	TRADEMARK
> 
> Register	PRINCIPAL
> 
> Affidavit Text	SECT 15. SECT 8 (6-YR).
> 
> Live/Dead Indicator	LIVE




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



> Registered and non-registered trademarks are both eligible for protection under the Lanham Act. *The advantage of having a registered mark is that after five years of unopposed use, the mark becomes "incontestable". An incontestable mark cannot be attacked on the grounds that it is merely descriptive (even if it is).* This means that the defendant in a trademark infringement suit cannot directly attack the plaintiff's mark, but must instead focus on showing a lack of a likelihood of confusion. Even without incontestability, a registered mark has a presumption of being a valid trademark, placing the burden on the defendant to attack the plaintiff's mark.




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.


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## Serendipity

Lone who?
As a (potential) consumer, it's never good for a company when the first I hear of them is bad press.  Privateer Press?  They I've heard of.


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## Morrus

JohnRTroy said:


> 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.




Well, the C&D issue is a bit of a misnomer - I don't think anybody strongly disagrees that other companies should use a different product name for their products.

It's the "force all your forum users to use the term correctly in conversation" bit which is a bit odd.


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## Dragonhelm

I finally have a few minutes, so I wanted to comment on a few things. 

I should say up front that I believe in protecting one's trademark and their intellectual property.  This is paramount to anybody who works in a creative endeavor.

That being said, this is a classic example of "what not to do."  Here are a few thoughts I have on the subject:

1.  The trademark is a weak one, as several others have mentioned above.  It doesn't stand out like Dragonlance, Dungeons & Dragons, Deadlands, etc. does.  I could easily see any number of fans coming up with the name without ever hearing of Lone Wolf.

2.  Lone Wolf is not a well-known brand.  They can't afford to be making enemies.  If they were the NFL, then maybe they could.  Right now, every dollar counts, and putting off fans is not the way to go.  

3.  Are these fans costing Lone Wolf any money?  If it was something like Ema's Character Sheets, then I could see that.  But from all accounts, this is just the work of fans with no money involved and doesn't have anything to do with Lone Wolf's particular Army Builder.  

4.  You do not build a house when you're busy tearing someone else's down.  When you go after fans and Privateer Press like that, you're not building a fan base.  

5.  What is your legacy?  When we think of TSR's web policies, we remember how they were tyrants, shutting sites down.  The company is long-gone now, but their internet legacy remains.  Lone Wolf has just created a new legacy for themselves, one that portrays them in a negative light.  People are going to remember this, and this will do nothing but hurt the brand.

6.  Pick your battles.  Decide for yourself if this was worth fighting.  Don't fight a battle just because you can.  Look at how WotC handles things.  Now, I don't always agree with them, but generally they leave fan sites and fan works alone.  They only send out C&D letters to those who infringe on their ability to make a profit.  

7.  Build your fan base.  If the use of Army Builder on another company's forum is endangering you, that's a problem.  Instead, focus on the positive, and build up your Army Builder brand, preferably on your own forums and in more public places like EN World.

Personally, I feel that this move will hurt Lone Wolf for some time to come.  They have just put off several potential customers, and perhaps angered some existing customers.  I know that I won't be buying from them any time soon.


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## arscott

Dragonhelm said:


> Basically, the NFL doesn't want anybody using the phrase "Super Bowl" other than them, even though it has entered the common vernacular.  So you often hear radio personalities making light of the situation by calling it things like "the big game" or "the end-of-the-year championship game."  It sounds silly to say that instead of Super Bowl, and all this does is cause a negative image of the brand in the mind of consumers.  Granted, people are so into football that it won't cause them any financial distress.  Still, the possibility is there for them to do more harm than good.



The difference is, The NFL has a legitimate claim to "Super Bowl".  It's not a generic description of the product (If Lone Wolf ran football, I assume it'd be called "The Playoff Game ®"), and the phrase is well known and widely used entirely due to the NFL's influence



Runestar said:


> Superbowl is copyrighted?



Trademarked.  Which is very different from copyrighted







> So hypothetically, if I had this really great bowl I wanted to term "The super bowl"...



Actually, that'd probably be okay, as long as you don't use the mark in a way that implies a connection to the big game.  Trademarks are category specific--That's why you can have both Skippy peanut butter and Skippy dogfood in the same supermarket.

But the use that the NFL goes after is clearly designed to create a connection between the infringing product or service and the NFL's product.  They're not saying "Use this TV to watch some random thing that happens to be called the superbowl" they're saying, "Use this TV to watch the NFL Playoff game".  The NFL's position is that if you want to use their game to sell your TV (or your church, or whatever), that they should get some money out of it.


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## Glade Riven

BTW, a quick rundown of US Trademark Law basics

Just about anything can be a registered trademarked - even if someone else has trademarked it before. Partially, this is because it is legal for businesses of two completely different feilds to have similar names or logos (You won't see Delta Machinery sue Nintendo over the use of the Triforce logo in a Zelda game).
Registering a trademark does not mean that it will hold up in court, but you do have to have a trademark registered in order to defend it in court.
A Trademark can be claimed without registering it (using TM instead of the Circle R). Companies usually do this for a number of reasons, such as time (product needs to get to market), variations of the orginal logo, or registering items in bulk to save on cost. Still needs to be registered for court purposes.
Fair Use is a nice, fuzzy grey area designed to protect common people from being sued for using a term, either because it is generic or it is referencing whatever is trademarked.
There's a goverment website with more details, but a lot of it does seem to come down to how good of a lawyer you have and how long the trademark has been used/registered.

This letter looks to be written either by or at the order of someone who doesn't quite understand US Trademark law, thereby just making them look stupid. It also implies certain misconceptions about digital media and interactive tools. I don't see this going to court, or at least not lasting very long before the judge dismisses the complaint.

Oh, fun fact: Fan-created content is classified under trademark law as Derivitive Works, which means that holders of trademarks can legally order you to cease and desist. It's rare for it to be excercised, though, due to it not being the the companies best interest (cost, alienates customer base, hurts the brand, etc.).


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## Silverblade The Ench

Yet more reason to completely destroy the concepts of copyright, IP, DRM and patents.
Ick. becoming a deadly lead weight aorund our necks.
Corporations are immortal, they have been made to have status equal to a real person but don't pay inheritance taxes (think about it), and now can donate as much as they like to whatever candidate they like in the USA (see recent supreme court rulling, and think about what that means).
So, they cna do all kinds of stuff which in the normal sane world would be considered INSANE, like this issue. It's pure Kafka

I'm an artist. But I'd rather copyright etc dies, than freedom does.

*Moderator's note:
Above, we see a post that is sliding into real-world politics.  While some discussion of the details of relevant law may be allowed here from time to time, in general real-world political matters are not open for discussion on EN World.*


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## JohnRTroy

> Well, the C&D issue is a bit of a misnomer - I don't think anybody strongly disagrees that other companies should use a different product name for their products.
> 
> It's the "force all your forum users to use the term correctly in conversation" bit which is a bit odd.




Actually, that isn't so unusual.  I remember in the late 1970s a little pamphlet came with my LEGO set telling people to try to avoid using the term "Legos" and saying instead "LEGO bricks and toys".  Companies really work hard to prevent their trademark from becoming a verb.

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

http://www.tabletopgamingnews.com/2010/02/01/33231/comment-page-1#comment-47350

http://www.tabletopgamingnews.com/2010/02/01/33231/comment-page-1#comment-47356


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## Morrus

JohnRTroy said:


> Actually, that isn't so unusual. I remember in the late 1970s a little pamphlet came with my LEGO set telling people to try to avoid using the term "Legos" and saying instead "LEGO bricks and toys". Companies really work hard to prevent their trademark from becoming a verb.




That's a curious regional thing.  Here in the UK it's simply "lego", and when I hear Americans say "legos" it sounds very strange to my ears!


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## Remus Lupin

> 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.




You may very well be right, but if I'm reading your analysis correctly, then all I have to do is trademark a commonly used term, and then sit on it for five years, without calling any attention to it by sending out a C&D letter to others using the term. Then, when the clock turns over on the incontestability clause, I pounce mercilessly on people using the term casually.

I don't have any problem with Lone Wolf trademarking the term, but their behavior seems kind of draconian to me.

By the same token, I'm not in favor of eliminating the concepts of trademark or copyright, but at least in the U.S. this is a pretty good example of why it probably needs to be reformed.


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## Yair

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)


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## Tale

S'mon said:


> The US Trade Marks office really registered that? You guys will register (& Patent) anything! I can't see that getting registered in the UK. Nor 'Player's Handbook', BTW.



 Dude, even "Superhero" is an officially registered Trademark.  Co-owned by Marvel and DC.

But not super hero.  hah


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## 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


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## deadsmurf

JohnRTroy said:


> 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

Yair said:


> 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

ExiledinElysium said:


> 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

Tale said:


> 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

arscott said:


> 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.


----------



## Infiniti2000

ExiledinElysium said:


> 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.



  This simply isn't true, so I recommend you double check with your textbooks and maybe your professors.  The best example here is, in fact, Xerox, who spent millions of dollars "educating the public" so that their name doesn't get genericized.  Granted, Lone Wolf is nowhere near at the same level of common use as Xerox so the analogy is crap, but Xerox is definitely the prime example of a successful defense.  Counter examples of companies NOT taking the appropriate action to fight genericide are cellophane (DuPont), escalator (yes, originally a trademark), and lite beer.


----------



## Infiniti2000

Note: IANAL but I did sleep at a Holida Inn Express® last night.


----------



## Tale

Morrus said:


> 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.



 I'll concede that.  Maybe I was making a semantic argument.


----------



## ExiledinElysium

Tale said:


> 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.




Yes, you're completely right, but that is not the same thing as saying they're legally required to police their trademark.  Holding a trademark confers rights, not duties, and this is an important distinction.  Supposed infringements can indeed be defended as implied consent if not timely enforced, and I think the point a lot of people on this thread are making is that it would behoove a company like Lone Wolf to give express consent to a large chunk of infringements that aren't actually harmful to their profits, since what they are doing risks alienating whatever fanbase they have.

Being encouraged to do something because it's probably in your own better interests is not at all equivalent to having a legal duty imposed on you to perform.  That very equivocation is what leads me to believe they haven't actually consulted lawyers.  Either that or they need to fire their in-house counsel.  It's sad but true that having a JD doesn't actually make one a reliable legal advisor.

I'd also like to point out that I think a lot of you are misconstruing what it means to have registered the trademark "Army Builder."  Someone earlier on this thread pointed this out but it got lost in the shuffle.  The trademark is inextricable from its context.  The peanut butter company (the example used by the aforementioned member) owning the trademark "Skippy" doesn't preclude the dog food company from using the same word as their title.  Skippy (the peanut butter) is not a trademark by virtue of the word itself, but rather the whole image and the way it's used.  It's a tradeMARK, not tradeWORD.  The image is very important.  When being discussed verbally or textually, the context is just as important as the image we visually associate with the word.  I can talk about a person who hires mercenaries and refer to them as my "army builder" without infringing on the trademark.  I would be infringing (assuming Lone Wolf's trademark claim is valid), however, if I were to refer to an excel sheet I set up to tally up my Warhammer army roster as my Space Marines Army Builder.

I should note that I could be wrong about my above analysis.  It's possible that the image is far more important than I'm making it out to be.  I might track down a trademark expert on the faculty here and ask them about this.

Cheers,

Kyle


----------



## Dausuul

ExiledinElysium said:


> If they wanted a trademark, they should have called it "Roster Monster" or something.




Then they'd get sued by Monster Cable.


----------



## Glade Riven

And here is where it depends on how good of a lawyer you have...

Either way, Lone Wolf handled it in a sloppy manner, and are rather deserving of Privateer Press's reaction of meeting the request while kicking them in the shins.


----------



## ExiledinElysium

Infiniti2000 said:


> This simply isn't true, so I recommend you double check with your textbooks and maybe your professors.  The best example here is, in fact, Xerox, who spent millions of dollars "educating the public" so that their name doesn't get genericized.  Granted, Lone Wolf is nowhere near at the same level of common use as Xerox so the analogy is crap, but Xerox is definitely the prime example of a successful defense.  Counter examples of companies NOT taking the appropriate action to fight genericide are cellophane (DuPont), escalator (yes, originally a trademark), and lite beer.




I think you misunderstand me.  I'm saying it's their right to do exactly what Xerox tried to do and it's their right to enforce their mark.  The way they've stated the situation, though, suggests that they don't have a choice in the matter, which isn't true.  Refer to my responses to Tale and to Morrus's post.

I'd be curious to know how much damage would actually be done to Lone Wolf as a company and to their profits if people were allowed to use 'army builder' as a generic term for roster construction tools.  If they really are the top dog in the industry, I doubt it would matter in the slightest.  Take a look at Xerox; they're still the biggest copier firm aren't they?


----------



## fugue27

ShinHakkaider said:


> Wow. I'm a big fan of their HeroLab (am I allowed to type that here?) software but I gotta say this sounds like a real douchey move on their part. I understand the need to protect IP and all that but, wow. I'll keep using the product that I've bought but I dont know if I'll be giving any more of my money to this company.




I agree with you 100%. I love HeroLab, but man.... this is just, ouch.


----------



## Wulf Ratbane

Transbot9 said:


> Either way, Lone Wolf handled it in a sloppy manner, and are rather deserving of Privateer Press's reaction of meeting the request while kicking them in the shins.




It's funny watching the flea dictate terms to the dog.

I checked out Privateer's official army builder app, iBodger. It looks pretty slick.


----------



## ExiledinElysium

Wulf Ratbane said:


> It's funny watching the flea dictate terms to the dog.
> 
> I checked out Privateer's official army builder app, iBodger. It looks pretty slick.




I think it's enormously significant that you just referred to iBodger as an army builder app.  Did you use that term intentionally tongue-in-cheek?


----------



## Paul_Klein

Can they send C&D orders to, like, the United States Army?


----------



## Friadoc

You know, I get the company to company aspect of this thing, but last time I checked, at least with respect to many of the democracies that would respect various trademark laws, the common folks' freedom of speech and expression trumps their trademark law.

If I wanna use the words "Lone Wolf" or "Army Builder" together, in any shape or form that I wish, then I can. Period.

As we've all seen, time and time again, running around on the Internet and telling folks what they can and can't say is one of the handful of things that usually creates a united front in the nutty folks of electronic world.

So, sorry Drone Wolf, if I wanna use the phrase Lame Builder, or even Army Builder, I can and will and I'll do it wherever I wish, too.


----------



## Wulf Ratbane

ExiledinElysium said:


> I think it's enormously significant that you just referred to iBodger as an army builder app.  Did you use that term intentionally tongue-in-cheek?




I wouldn't call it enormously significant, but as a professional writer, very few of the words I use are unintentional. It's sort of like asking a slugger if he actually aims for the ball or just gets up there and swings the bat.


----------



## El Mahdi

deleted


----------



## n'haaz-aua

Nifft said:


> Those letters sound like an *army builder*, building an army of resentment against their company.




Thread done in one.  Congrats.


----------



## El Mahdi

deleted


----------



## Treebore

Glyfair said:


> Yeah, I'd have to dispute their "because of us the term is popular" claim.  I know I heard that term used around the gaming stores at least as far back as the 80s.





Yep. They may have Trademarked the term, but they are going to have a hard time proving the term wasn't already widely used among gamers well before 1998.

I think they will find they can only protect "Army Builder" when used in more specific situations and also find that Trademarks are better defended when you coin an original name in the first place.


----------



## Mathew_Freeman

Buttercup said:


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






Piratecat said:


> 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!




ENWorld haz teh funnies. 

When I played WH40K, I used to enjoy putting together imaginary lists of mini's I'd like to buy, so that I could plan out future purchases (which never came to anything). This would, of course, have made me an ARMY builder at the time.

Hey, who's up for a .sig campaign? ARMY BUILDER ARMY BUILDER ARMY BUILDER.

Seriously, I find the conduct of Lone Wolf absolutely laughable. If they consider going after internet forums to stop people using the words Army Builder a useful way to spend their money, then good luck to them, but I can't see it having any useful effect.

Oh, and ARMY BUILDER.


----------



## Morrus

Treebore said:


> Yep. They may have Trademarked the term, but they are going to have a hard time proving the term wasn't already widely used among gamers well before 1998.
> 
> I think they will find they can only protect "Army Builder" when used in more specific situations and also find that Trademarks are better defended when you coin an original name in the first place.




Indeed. Trademarks aren't some magical spell. It's easy to register a trademark; defending it is harder.

Certainly situations where a term has common prior usage are harder to defend than those where a company actually coins the term in the first place.

I'm not very familiar with wargaming terminology, and wouldn't know whether "army builder" was a commonly used term prior to LW's registering it as a trademark. It's most certainly not in any danger of becoming a household term, though. Quick survey of those in my house right now - zero percent knowledge of the term (including me - and I'm a gamer!). That implies to me that their fears are unjustified.

We're not talking xerox or kleenex here.


----------



## JohnRTroy

> Yep. They may have Trademarked the term, but they are going to have a hard time proving the term wasn't already widely used among gamers well before 1998.





Doesn't matter.  Two things happened.

It went through the USPTO due dilligence, which means a government attorney reviewed and found it to be a valid trademark.  They have to review these things and determine if getting a trademark is fair.

It has been successfully registered for 5 years with no challenges with no challenges by other companies.  Thus, even IF it is a "common term", that will not matter for any legal proceeding--the burden is on the defendant, not the plaintiff.  This is not like a patent, where you can invalidate it with "prior art".  The key thing is consumer confusion and prevention of Trademark dilution.


----------



## Yair

Piratecat said:


> 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!




Curses! Foiled again. 

Yai... errg... make that - Army Builder.


----------



## JohnRTroy

Actually, I hate to say it, but I think Privateer did the wrong thing.  They basically responded to what was likely to be a private inquiry with a public snarky and sarcastic response.  This only turned into a tempest because of what Privateer did, not anything Lone Wolf did.  It looks like what they did was the unprofessional thing and based on the fact that PP shut down discussion of this tells me that maybe somebody at PP responded without having their morning coffee.


----------



## coyote6

Man, I hate when companies I otherwise quite like (Hero Lab for M&M is awesome, and it's pretty good for d20 & other games, too) critically fail their PR checks.


----------



## shieldknight01

*5 years*

I find it interesting that LW decided to wait almost exactly 5 years to "enforce" their trademark.  They obviously waited because they knew that if they tried anytime before the mandatory 5 year waiting period was up they would have many complaints and contests to the trademark.

Smells fishy to me, and evil.

Put me down for those that no longer will do business with LW.  

Manipulating the system will push me against you every time.


----------



## jdrakeh

JohnRTroy said:


> Actually, I hate to say it, but I think Privateer did the wrong thing.  They basically responded to what was likely to be a private inquiry with a public snarky and sarcastic response.  This only turned into a tempest because of what Privateer did, not anything Lone Wolf did.  It looks like what they did was the unprofessional thing and based on the fact that PP shut down discussion of this tells me that maybe somebody at PP responded without having their morning coffee.




*Army Builder*.


----------



## shieldknight01

Makes me wonder if someone should make a list of other common gaming terms that have been submitted to the trademark office in the last 5 years.  Just in case we want to contest the trademarkability of them.


----------



## Zander

Infiniti2000 said:


> 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.




Apologies for the OT post but...

I don't think anyone would include the words "micro" and "soft" in the name of a sex toy. The Grandma Rule (TM) prevents me from explaining why.


----------



## jaerdaph

Zander said:


> Apologies for the OT post but...
> 
> I don't think anyone would include the words "micro" and "soft" in the name of a sex toy. The Grandma Rule (TM) prevents me from explaining why.




You win the thread!


----------



## Relique du Madde

Yair said:


> 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)




You know what would have scored Lone Wolf some points?  If they Community Common-ed their system using a not for commercial use, not for redistribution without consent, and a using the no mixing attribution (aka 'the friendly copyright').  

Army Builder (cc) because getting a copyright without being getting an enforceable copyright is user friendly.


----------



## falcarrion

I think Lone wolf did nothing wrong. They where in the right for what they did.
PP started the fire, then shut down talk about it on there sight. 
Why did they do that?
Why did they even print what was sent?
Was it just to start trouble?
I would like for both parties to come here and tell there side of the story.
We wouldn't want another Salem witchhunt to happen do we?


----------



## webrunner

I don't think it's unreasonable or novel (nor has it ever been) to call something which is used to *build* an *army* an *army builder*.  I would be surprised if they were the first ones to do such a thing.


----------



## jasonbostwick

If Privateer Press felt that they had the legal duty to comply with what Lone Wolf was asking, they *had *to make it public. 
Complying with Lone Wolf involved deleting several threads and censoring a commonly used phrase - this wouldn't have gone unnoticed.

Imagine if they'd put the word filtering of "Army Builder" to iBodger on without informing the community of the issue. It would be interpreted as a heavy-handed promotion and endorsement of the tool (despite no official connections between PP and the creator of iBodger.)
There would be substantial outcry if the threads discussing a few other fan-made 'army list creators' were deleted with no warning.


The closing of the thread discussing the issue seems like a legitimate extension of their prior forum policy of not allowing representatives of other businesses to promote their products on their forums - I don't frequent their boards that often, but I know that they have been fairly strict about limiting mention of some online retailers.


----------



## Glade Riven

Threatening to sick lawyers on someone as the first move was Lone Wolf's mistake (which is heavily implied by the letter sent). It's agressive & tactless, promoting an equilly tactless initial reponse. Privateer Press has closed the thread and ended dicussion on their forums to clean up things on their end, while Lone Wolf tries to clarify themselves with further statements.


----------



## thzero

Won't be buying anything [not that their character builder, is that trademarked by them yet?!?! , is any good anyways] again.  Besides their licensing is horrific.

"Army Builder (R)" is really a bad trademark as its two generic words slapped together, but alas its sorta like the patents these days, its all hosed up.  Since it is two generic words together, the trademark genericization WILL happen.  It's not like their trademark is "Coca-Cola" or "Coke" which are not generic words.  And "rollderblading" and "bandaid" are used as common colloquialisms.

1998, and yet they have just started complaingin about things now as one other post pointed out?   While they do have a legit gripe if someone was using the term "army builder" as the official name of their product.  And outside of a few circles, the product nor the trademark is not "well known".

And just for the record, army builder.  And I will continue to use it as a generic term.  Mostly because I know the term, in reference to wargaming, was in use prior to 1998 and therefore there is prior art.


----------



## denzoner

The subject line of this thread is totally (apparently) misleading. I'm sure we can't read the original threads, so there is no way of actually checking. But it sounds like Lone Wolf Development(R) is in the right here. They're not stopping people from using the words, army builder. It sounds like they want people to acknowledge that Army Builder (R) is a registered trademark, and that they shouldn't use call their army builders an Army Builder but something else. They do have the legal right to "defend" their property, and it is their obligation to educate in proper use, and it is also their responsibility to make sure it's usage, if being used, is used properly, i.e. only in reference to their Army Builder (R) product, and nothing else.

BUT, I think it's a BAD choice for a trademark, and waaaaaaaaay to generic of a name to have been trademark, but that's not our problem. 

You know what's not trademarked (afaik), Army Lab.


----------



## jasonbostwick

I didn't see it posted earlier in the thread, and you need to be a member of the PP forums to download the .pdf, so I figured I'd repost the notice sent to PP and the response they gave their fans.

(attached as .pdf as well in a more readable format)




> Hello Fans of Privateer Press,
> I regret to inform you all that today we received a cease and desist order from Lone Wolf studio’s regarding the use of their registered trademark “Army Builder”, for your reference I have included their e-mail and legal argument below:
> 
> “Greetings,
> 
> We haven't been actively monitoring the Privateer Press forums for a good number of months. Unfortunately, during that time, it appears that various members of your site have begun to heavily misuse our trademark, and we need your assistance in rectifying the situation. Please note that the term Army Builder is a registered trademark belonging to Lone Wolf Development and as such we have exclusive rights to use that mark in connection with any game-related computer software. We have no objection to the use of generic terms with similar meaning, such as "points calculator" or "roster construction tool". However, we cannot allow the improper use of our mark, as doing so could dilute our rights as well as cause confusion in the marketplace. Pursuant to the above, the name Army Builder exclusively refers to the Army Builder brand of roster construction software tools. While other roster construction tools certainly exist, the name Army Builder may only be legally used in conjunction with the Army Builder brand of products from Lone Wolf Development. Unfortunately, there are active references to other tools on your site that misappropriate our trademark. 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. The term "Army Builder" is a brand name specific to our product - it is *not* a generic term. We are prepared to educate your users about this fact via posting ourselves on your forums. However, it would probably be more productive if you handled this through an official announcement, and it would also provide Privateer Press with control over how the process is handled. If you choose to make a general announcement about this, we have written an explanation of the situation that is targeted to consumers. I've included the text of this explanation at the bottom of this report, and you are welcome to use it if you wish. You can
> present your own explanation if you prefer, provided it portrays the situation accurately. 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 regards to the education of posters regarding the Army Builder trademark, please advise us within 72 hours on the manner in which you prefer it be handled. We will refrain from posting on the Privateer Press forums to accomplish this objective until we either hear from you or the timeframe elapses. I assume you are familiar with the way trademark protection works, but I'll restate the basics just in case. It is a legal requirement that we police the use of our trademarks. The term Army Builder is a registered trademark belonging to Lone Wolf Development and as such we have exclusive rights to use that mark in connection with any game-related computer software. If we allow the improper use of our mark, we could potentially lose our rights to the name. We are thus required to do this. If you are interested in understanding this issue better, there is an excellent article on wikipedia (see Genericized trademark - Wikipedia, the free encyclopedia).
> 
> Thanks in advance for your timely cooperation in this matter.
> 
> Rob Bowes, President Lone Wolf Development”
> 
> 
> 
> 
> In order to comply with this request we are compelled to take immediate and drastic action. As a result of this letter we are more than happy to remove the presence of “Army Builder” from the forums as requested. As we cannot control how this registered mark might be used in every sentence and in every post we will be required to remove it from appearing on this forum. From this moment onward the phrase “Army Builder” can never appear again on this forum, in any form, so as to ensure that no perceived harm or implied dilution come to the Lone Wolf Development property of the same name. Furthermore, because past forum posts could still be referenced, in an effort to be complete we must delete entire offending threads. We know how much time and effort went in to creating all of the assets this dedicated community has made available on these forums, and we sympathize with you about the ensuing loss. We apologize for the burden and inconvenience this forced moderation places on you.
> In the future, any attempts to reference “Army Builder” will be benignly changed to “iBodger”, our officially recognized and supported iPhone application for Force Creation. I thank you for your understanding in this matter.
> Brent Waldher
> Licensing and Contract Manager
> Privateer Press, Inc.


----------



## Stormonu

All this just enforces my loathing of copyright and such.

To top it off, the army builder program is pretty sad anyway, or at least when I tried to use it for 40K - and how one used to have to get the army rosters (from the creators, no less) was pretty shady.  I'm surprised Games Workshop never sunk them for what they were doing.


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## Dire Bare

Dire Bare said:


> If I read that correctly, Lone Wolf has NOT sent any C&Ds.  They simply sent a letter to Privateer Press to ask them to help police their trademark, "Army Builder".  Lone Wolf is certainly within their rights to protect their trademark, the program IS the most popular tool for miniature wargamers and has been for years.   "Army Builder" is just as a legitimate trademark as "Player's Handbook".




Hmmm, upon reading the letter again and viewing ENWorld front page news and the discussion here . . . . I still feel that Lone Wolf has a legit trademark for "Army Builder" and needs to defend it . . . . but it seems they aren't simply asking folks to stop calling their software programs "army builders", but they are trying to police conversations on message boards.

Bad move.

Between how they acted and how Privateer Press responded, they probably lost a significant amount of business from folks who play WarMachine and Hordes.

I use Army Builder for Warhammer 40K, I also use Card Vault and Hero Lab.  I don't think I'll abandon my use of their software right now, but I have a bad feeling about their recent actions.  If a competitor comes up with solid software as an alternative, I just might switch.


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## Kax Tuglebend

One rather salient point which I don't believe has been made (mea culpa if it has) is that in *theory *Army Builder allows the purchaser to make files for games which will allow him/her/it to build army lists, however in practice the majority (I wouldn't be surprised if it was 99%) of users do not make their own files, they simply download the pre-made fan ones that Lone Wolf kindly provides a link to on their site. 

Now, I like Army Builder: I frequently use it to look up particular rules/stats when I don't want to dig out the relevant rulebook _*or buy the relevant rulebook*_, particularly in regards to Privateer Presses games as they are by far the most complete files linked to (in contrast Warhammer ones are full of instances of "see army book"). However I really do think a company which makes a fair bit of its money by stepping on other peoples IP shouldn't go round whining about its own ~ and that Lone Wolf rightly deserve a kick in the teeth for this bit of double standards.


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## Maccwar

Is it a full moon or April the 1st?

Who let the lawyers out?


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## Oldtimer

Friadoc said:


> the common folks' freedom of speech and expression trumps their trademark law.



Only a matter of time. They're getting there eventually.

Oh, and... ARMY BUILDER


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## scranford

While this is unfortunate it doesn't surprise me in the least. I had some major issues with Hero lab (Major to me anyway) which took me going to a public forum with the issues to be resolved. In the process I felt personally insulted by the owners treatment of me as a customer, and personal attacks which were veiled by comments leading to their belief that the majority of the people in the world are crooks. 

I feel they really believe the world is out to get them, when if fact the number of people who even know who Lone Wolf Development are, or their products is miniscule. It's a shame really because their software is top notch, but their customer service, and paranoia, makes me wish there was a competitive product out there I could give my money to. 

They need to understand that if they treat people with respect they will find goodwill gains them many more customers than lawsuits, and cost them many less.


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## Turtlejay

A far more productive move, if indeed they felt their brand was in danger of being diluted, would be a *rebranding* of their software.

Avatar:  An Army Builder

That way you retain your base built using the 'Army Builder' name, and piggyback on the Avatar popularity.

It's a win win!

Jay

PS - Army Builder


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## Morrus

JohnRTroy said:


> Actually, I hate to say it, but I think Privateer did the wrong thing. They basically responded to what was likely to be a private inquiry with a public snarky and sarcastic response. This only turned into a tempest because of what Privateer did, not anything Lone Wolf did. It looks like what they did was the unprofessional thing and based on the fact that PP shut down discussion of this tells me that maybe somebody at PP responded without having their morning coffee.




If you read the linked documents, it was a demand that they censor the conversation on their forums - accompanied by a 72 hour deadline pending legal action.  There's no "what was likely" about it - the documents are plainly readable.

It is wrong in two ways:

1) Including a legal threat and deadline at the outset, without engaging Privateer in conversation.

2) Attempting to regulate conversation about such products by the general public, as opposed to PP's own use of trademarked terms; and putting the onus on PP to defend LW's trademark to the general public.

There are some fairly weak claims (but stated in definitive terms) that "conversation on the internet" equates to "PP publishing materials in print". It's a very weak stance, and certainly not one to base definitive threats of legal action on.

I've received similar legal threats in the past. Folks claiming that *I* am libelling them because someone used a comminication medium I provided to say something. This is akin to claiming a telephone company is liable for what is said on the communication medium _they_ provide.

Needless to say, 100% of these threats have amounted to nothing.


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## Morrus

denzoner said:


> The subject line of this thread is totally (apparently) misleading. I'm sure we can't read the original threads, so there is no way of actually checking. But it sounds like Lone Wolf Development(R) is in the right here. They're not stopping people from using the words, army builder. It sounds like they want people to acknowledge that Army Builder (R) is a registered trademark, and that they shouldn't use call their army builders an Army Builder but something else. They do have the legal right to "defend" their property, and it is their obligation to educate in proper use, and it is also their responsibility to make sure it's usage, if being used, is used properly, i.e. only in reference to their Army Builder (R) product, and nothing else.




Nope - they demanded that Privateer edit conversations on their forums between members of the public to change any reference to the concept of an "army builder" to something else.

The "don't call your product an army builder" part I can get on board with.  That's a little heavy handed, but understandable.

The "edit the public's conversations to change any reference to army-builder-type-products" to a generic term?  Nope.  Can't support that.


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## pawsplay

I found a generic use of the term "army builder" dated 2003:

Review of Savage Worlds - RPGnet

EDIT: Oh, nm, it refers to the Army Builder after all. But without caps.


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## DaveMage

I would have responded the same way PP did.

Heh.

+1 xp for them....


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## Nikosandros

DaveMage said:


> I would have responded the same way PP did.
> 
> Heh.
> 
> +1 xp for them....




I think I'm missing something here. From the linked PDF it seems that PP simply complied with the request.


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## JohnRTroy

> I didn't see it posted earlier in the thread, and you need to be a member of the PP forums to download the .pdf, so I figured I'd repost the notice sent to PP and the response they gave their fans.




Thanks for that!  I find Privateer's response a lot less snarky now that I have context.  It only seemed snarky because it seemed like they were inserting their own trademark and/or trying for publicity.



> Now, I like Army Builder: I frequently use it to look up particular rules/stats when I don't want to dig out the relevant rulebook or buy the relevant rulebook, particularly in regards to Privateer Presses games as they are by far the most complete files linked to (in contrast Warhammer ones are full of instances of "see army book"). However I really do think a company which makes a fair bit of its money by stepping on other peoples IP shouldn't go round whining about its own ~ and that Lone Wolf rightly deserve a kick in the teeth for this bit of double standards.




Well, I hate to say it, but like the OGL fans and the retro-clone makers like to say..."you can't copyright game rules", so if that's the case they are in the right.



> Makes me wonder if someone should make a list of other common gaming terms that have been submitted to the trademark office in the last 5 years. Just in case we want to contest the trademarkability of them.




That won't work.  Opposition can only be filed if you would be directly harmed by the truth.  In other words, to oppose a trademark you'd have to be directly involved.  Unless you actually had software that "built armies" and felt the term was generic enough and part of your advertising, you wouldn't have a case.  You can't object just because in your opinion the term is generic.

As far as generic goes, that's up to judgement.

Somebody mentioned Coca Cola.  Well, those were two works, Coca for the Coca Leaf (the original Coke had some cocaine), and Cola, a variant (but legit) spelling of the Kola nut.  So, two real words.  Combined they were enough of a Trademark.  Maybe its hard to see it now with the power the Coke brand has done over the years.

Heck, I'll bet somebody with an APAzine complained about the generic trademark of Dungeons and Dragons.  

You can trademark phrases even if they "seem" generic.  Remember, Trademarks usually are of a very narrow scope, and are only used for product labels.  DC can still call Billy Batson Captain Marvel--they just can't use it on the cover.  Marvel can still use Radioactive Man (Chen Lu, from china, a green fat guy who appeared in the 60s), but they can't use him on the cover because Fox has a Registered Trademark for the Simpson's character.

Here are some that might seem generic, but are legitimate.

PRODUCTS OF YOUR IMAGINATION:  Used to be owned by TSR, owned by Zazzle until abandoned.

YOU WILL.  AT&T.  Used in advertising during the 90s.

STEAK SANDWICH SUPREME--DEI RANCHO USA, INC, used in restaraunt services.

Other Phrases that might seem like normal conversation but are Trademarks in limited use include

THE FIT YOU WON'T FORGET
HOW FAR WILL YOU GO?
YOU WON'T BELIEVE YOUR EYES!
WHERE WILL YOU PLAY?

The USPTO has the following Trademarks with a variation of Builder.

CLOSET BUILDER
PROFIT BUILDER
PIPE BUILDER
TURF BUILDER
BLOSSOM BUILDER

If those are valid, so too I can see Army Builder.

Some you might not expect.  Layer Cake is a generic term, but when used for Wine (!?!) it's a Trademark.  

The point I want to make is double-pronged.

1)  The Trademark is not meant to prevent the use in general discussion, so all of you posting "Army Builder" in big bold letters aren't upsetting them at all.  The point is to make sure in narrow specific uses that nobody can label their competing products with that term.  From what I understand, the only objection to Army Builder they had was links to products labelled or describing themselves with that phrase.

They aren't trying to censor, but Trademarks are very important.  I can understand criticism of Patents and Copyright (even if I don't agree), but Trademarks are to protect US, to prevent people from making knock-offs with the exact same labels.  

2)  Did Lone Wolf go too far?   It's possible, but at the very least they needed to at least make people aware of this and I don't think they were in the wrong.  At the very least, even if Privateer didn't comply, the legal notice can be enough to prevent it from becoming generic.  That's what Xerox and Lego did by informing people via product literature and making sure competitors didn't call their work Xerox or Legos.  In this case, even if the act brings a little bad will by overzealous crusading people--it might be worth it to keep the Trademark.


----------



## Morrus

Nikosandros said:


> I think I'm missing something here. From the linked PDF it seems that PP simply complied with the request.




They did - and then went further,

Lone Wolf wanted them to edit people's post so that any conversational reference by the public to an army builder not produced by Lone Wolf would be referred to as a generic term (such as "unit roster application" or something). However, references to Lone Wolf's product "Army Builder" would be left alone.

PP decided that any mention of the worlds "army builder" would now be automatically edited to read "iBodger" (their own application which does the same thing). They declared that this was because they could not police every post to contextually edit each appropriately (which would require a human to physically read every post), so they imposed a blanket ban on the term "army builder".

LW's proposal that PP read every post and contextually edit them if they referred to an army builder other than LW's Army Builder clearly isn't possible (imagine if someone asked me to read every one of several million posts on EN World). So they adopted a blnaket overkill approach, and at the same time prevented anyone from ever mentioning LW's product at all. Obviously this is partly practicality- demanding that they monitor every post is impossible - and partly an emotional reaction.

The problem here is that LW chose not to say "Hey, PP guys, we have a problem - would you be so kind as to work with us to resolve it?"  They said "We demand you do this within 72 hours or we'll take legal action".  That's gonna get your back up when you're on the receiving end.  Then claiming that everyone read the initial email out of context is just a little insulting, and that it was meant as a friendly request,  rubs salt in the wound.  You don't incude legal threats in friendly requests.  

It was a bad judgement call.  They could have achieved their goal by being friendly.  They chose to be antagonistic - and then compound it by claiming they weren't being antagonistic _after_ everyone read the email.

They threatened PP, pure and simple.  Take the legality out of it - it's bad PR, and it's an amateur choice of professional interaction.  Don't be a bully when you can smile - it may have worked in high school, but in the grown-up world it makes you look like a douchebag.


----------



## The Hound

As a strong supporter of free speech everywhere and an advocate of greatly restricted copy-rights I say:

1) Boycott the bastards pre-emptively.

2) If anyone is forced to eliminate the term "Army Builder" from their website, then they should also eliminate all mention of "White Wolf Games" and all mention of White Wolf products.


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## JohnRTroy

The Hound said:


> As a strong supporter of free speech everywhere and an advocate of greatly restricted copy-rights I say:
> 
> 1) Boycott the bastards pre-emptively.
> 
> 2) If anyone is forced to eliminate the term "Army Builder" from their website, then they should also eliminate all mention of "White Wolf Games" and all mention of White Wolf products.




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.


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## Dedekind

JohnRTroy said:


> <snip> 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.  <snip>




LOL  Good point. I have never heard of them. 

I am for people protecting their property. However, economic forces being what they are, generic product names will always have this problem. Sorry Band-Aid...


----------



## Zelligars Apprentice

[sarcasm]
You know, I have to applaud Lone Wolf for one thing: Generously hiring the old TSR legal staff.  In these economic times, it is hard for anyone to find work these days, never mind overzealous incompetent lawyers.  So kudos to you, Lone Wolf, for reaching out to these poor souls and magnanimously giving them a paycheck!  If more game companies acted like you, the world would be a very different place.
[/sarcasm]

In all seriousness, I tried Hero Lab* for Mutants and Masterminds.  In my opinion, it was horrible.

*Hero Lab(R) is a registered trademark of Lone Wolf Development, used without permission.  Its use in this forum post is not in any way intended to challenge, infringe, or dilute their legal rights to the aforementioned trademarked term.  All legal rights to the term Hero Lab(R) according to US Patent and Copyright law are acknowledged to belong to Lone Wolf Development exclusively.  All standard disclaimers apply.  I am not a lawyer, I don't even play one on TV or in role-playing games, so nothing in this post can be construed as legal advise.  This post is provided as-is, with no warranty (implied or otherwise) as to fitness or suitability for any purpose whatsoever.  Please, oh Mr. Lone Wolf sir, don't sick your lawyers on me!  Congratulations on reading this far.  Yes, this part of the post is meant as sarcasm also.  Thank you.


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## Umbran

The Hound said:


> As a strong supporter of free speech everywhere and an advocate of greatly restricted copy-rights I say...




I will note, just for the sake of correctness - this is not a copyright issue.

This is a _trademark_ issue.  Trademarks are a form of intellectual property, but it is different than a copyright, legally speaking.


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## ShinHakkaider

JohnRTroy said:


> 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.




I own a paid for copy of HeroLab and paid for the Pathfinder plug-in and well as the Mutants and Masterminds plug-in. I also own several Warmachine Cygnar mini's as well as the rule book for Warmachine. I'm not some guy who's just jumping on board to boycott them just to say that I'm going to do it. 

It's absolutely possible to be legally correct and STILL be a douchebag about it. In which case a person being IN THE RIGHT, doesn't necessarily make them RIGHT. LW could have gone about this differently, but they actively chose not to. While they provide a product that I use and like, so does PP. I'll be thinking hard about giving LW any more of my money.


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## ExiledinElysium

JohnRTroy=win.

Thank you for your earlier lengthy post, it was very nuanced.  You clarified some things about trademark law I was curious about.  

Still, my gut reaction to this is that it's unjust.  Lone Wolf seems to have gotten its legal high ground from a technicality.  It would make sense to me that "Army Builder" wasn't contested for either of two reasons.  

1) Developers of similar technology didn't include "Army Builder" in their trademark registration because they named their product something like "Roster Monster" or "ListLord" or "Jibberyjoo"...in other words they gave their product a proper name rather than naming it by exactly what it did.  In the minds of these developers, "army builder" was likely a phrase they used to describe their product's function.  

2) There simply wasn't an attempt by another firm to compete with Lone Wolf, either because of a perceived insufficient market or *because those people developing similar tools had no intent to market them for profit*.  In this latter, and I think much more likely case, Lone Wolf is asserting a right to preclude these other people from using a term common in wargaming parlance simply because the private developers had no desire to enter the market competition.  
This strikes me as unfair.  People make these excel tools, and they should be well within their rights to distribute them freely among their peers if they want to.  It seems to me that Lone Wolf is concerned with losing profits due to competition by these freeware tools, but they know they don't have a copyright claim so they're asserting a trademark dispute instead.  Amusingly enough, it's a trademark that nobody was even aware of.  

I think it's important to distinguish Army Builder from products like Xerox, cellophane, elevator(escalator?), thermos, Google, etc.  All of the members of the latter list became words in common use because the general population over time came to consider the product name as synonymous with its function.  I personally only say I'm going to Google something if I intend to use Google's search engine, but I'm sure there are plenty of people who think of "googling it" as meaning generally to perform a web search.  Similarly, Thermos became so popular that people think of any receptacle meant to keep their liquid item at its desired temperature over time as being a thermos.  Now turn back the clock.  Before Google became a firm, would it ever have occurred to anyone to refer to web searching as Googling?  Would anyone have thought to say "xerox" when they meant "make a copy of"?  Nope, not at all.  
Army Builder, on the other hand, is a phrase that certainly existed before Lone Wolf registered their trademark.  I don't know enough to dispute their claim that they are the reason it's a ubiquitous term, but I'm leaning to the side of that claim is false.  Keep in mind that I'm not arguing per existing law, I'm just arguing from a basic perspective of fairness; I don't know much about trademark law.  My basic problem here is that Lone Wolf is claiming all these rights to their mark that I didn't know existed.  Until today, I had no idea there was a software specifically called "Army Builder."  I've heard the term used since I was in middle school (when I was exposed to Warhammer), and I always assumed it referred to some tool or program that helped one build their army list.  Before today, I would have referred to any excel tool or published software that performed that function as "an army builder" *without any knowledge of the product from which the phrase supposedly originated*.  Lone Wolf hasn't been around long enough to claim the venerable status of the genericized mark.  Escalator is in the dictionary as a word because it has been around for a really really long time, and nobody even remembers when it was a brand name.  "Army Builder" is being used in common parlance simply because it's a succinct way to describe the excel tools people are making on their own, and this has *nothing to do with the brand*.  If I make a tool that helps me build an army, I'm not going to call it a roster generation tool...I'm going to call it an army builder.  I think this is just a common sense argument in support of the proposition that Army Builder should be too generic to trademark.

Um...I could keep rambling, but I have Con Law to read


----------



## denzoner

Morrus said:


> Nope - they demanded that Privateer edit conversations on their forums between members of the public to change any reference to the concept of an "army builder" to something else.
> 
> The "don't call your product an army builder" part I can get on board with.  That's a little heavy handed, but understandable.
> 
> The "edit the public's conversations to change any reference to army-builder-type-products" to a generic term?  Nope.  Can't support that.




1. I see, you're right. That's just silly.
2. That's the only part of what they requested that made _any_ sense.
3. Yeah, they're being retarded. They can _try_ and control language, but they're going to lose, and they're going to waste time, resources and fans in the process.  

On an ironic note, I didn't realize that this company has NOTHING to do with Lone Wolf RPG or gamebooks, and they have nothing to do with Lone Wolf & Cub (the manga)... and I thought they, at-least, had something to do with the games! I'm totally mistaken, talk about confusion - and aren't they in the same industry (games?)

I'm not even an idiot in hurry.


----------



## billd91

A friend of mine has HeroLab. Runs it on his Macbook Pro. Really likes it and is using it for Pathfinder characters for our upcoming campaign. I had actually been thinking about picking it up.

But I guess knowing the company engages in this level of douchbaggery is getting me to consider spending my money elsewhere...


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## lonewolfdevel

Greetings,

I just noticed this thread here on ENWorld, so I figured I better make myself available to answer questions and, in a few cases, clarify matters that seem to be misunderstood.

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. If I do, please point out where my language needs tweaking, and I can always check back with our IP attorney to get specifics, if necessary.

Thanks, Rob


----------



## DaveMage

billd91 said:


> A friend of mine has HeroLab. Runs it on his Macbook Pro. Really likes it and is using it for Pathfinder characters for our upcoming campaign. I had actually been thinking about picking it up.
> 
> But I guess knowing the company engages in this level of douchbaggery is getting me to consider spending my money elsewhere...




Yeah, I'm thinking the same thing.

However, if they were to apologize to PP (and its forum users) and admit how silly they were being, I could probably forgive 'em....


----------



## jdrakeh

JohnRTroy said:


> Lone Wolf is not White Wolf.




I'm sorry, but you can't use those trademarks in forum discussion and, lest you cease, will be subject to legal action. 












See? Now, doesn't that sound unreasonable?


----------



## AdmundfortGeographer

Silverblade The Ench said:


> ... and now can donate as much as they like to whatever candidate they like in the USA (see recent supreme court rulling, and think about what that means).



Not sure if someone else chimed in here but I could not let this pass. This is false. If you really DID read the ruling you would know that corporations (and unions and not-for-profits and associations and etc) are *still* limited on how much can given to candidates. What was removed were bans against an organization being able to pay for issues ads directly out of their coffers.

Just sayin' so we're all clear.


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## JohnRTroy

jdrakeh said:


> I'm sorry, but you can't use those trademarks in forum discussion. See? Now, doesn't that sound unreasonable?




Trademarks can be used to describe a product, or to reference a product itself.  That's not what this was about.

Remember, the specifics of this case was not every single use of Army Builder, but forum entries where people were referring to their battalion constructor as "Army Builder".   Such as people saying "Pick up John's Army Builder 3.05".



> 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. If I do, please point out where my language needs tweaking, and I can always check back with our IP attorney to get specifics, if necessary.




Thank you for coming here, Rob.

Just out of curiosity, did you guys ever contact PP before sending the note that got a lot of people upset?  Was this note the first communication you had, or were there prior attempts?


----------



## jdrakeh

Kax Tuglebend said:


> However I really do think a company which makes a fair bit of its money by stepping on other peoples IP shouldn't go round whining about its own ~ and that Lone Wolf rightly deserve a kick in the teeth for this bit of double standards.




IANAL, but I did find it odd that a company whose website contains this web page is suddenly very concerned with intellectual property rights. While the page in question merely links to scads of unlicensed, infringing, material for the purposes of promotion, that certainly may be enough for somebody to take them (i.e., Lone Wolf) to the cleaners if the February 2009 verdict against The Pirate Bay ends up setting a legal precedent.


----------



## lonewolfdevel

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.

There were two separate problems on the Privateer forums. First of all, a number of fans created their own tools and elected to name them along the lines of "Jim's Army Builder". We insisted that Privateer either edit or delete specific references to those tools, as they were a direct infringement of our trademark.

The second problem was that, most likely due to the name choices in the fan-created tools, many fans on the Privateer forums had begun generically referring to all roster construction tools as "army builders". So we informed Privateer that their user community needed to be educated that this was improper. We never demanded any edits or deletion of such posts. That response was entirely Privateer's choice, and it was wholly unnecessary.

Anyone claiming that we demanded Privateer edit posts that were not a _*direct*_ infringement on our trademark (i.e. using our trademark as their proper name) is misrepresenting the facts. 

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


----------



## jdrakeh

JohnRTroy said:


> Remember, the specifics of this case was not every single use of Army Builder. . .




I do not think that this is clear, either in the published excerpts of the original C&D request, or in the further explanation from Lone Wolf. While they _do_ clearly mention instances of their trademark being used to promote some hypothetical product, they _also_ seem to suggest that the trademark cannot be used in regular forum discussion.


----------



## jdrakeh

lonewolfdevel said:


> 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, that is certainly more clear than the excerpts from the C&D letter and the previous attempts at explanation were. Thank you for being concise.


----------



## lonewolfdevel

ExiledinElysium said:


> 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.




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.


----------



## pawsplay

lonewolfdevel said:


> 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 was actually looing for such a reference. However, your recent C&D activities have google-bombed the phrase.


----------



## lonewolfdevel

deadsmurf said:


> 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.




We never attempted to do that. What we did was inform Privateer that the user community needed to be educated on the existence of the trademark and its proper use. Nobody can _*make *_somebody stop saying whatever they want. That would be a violation of free speech. However, it was well within our rights, and important if we want to avoid genericization of our trademark, to educate the community about the trademark. That's what we asked for - nothing more.


----------



## lonewolfdevel

shieldknight01 said:


> I find it interesting that LW decided to wait almost exactly 5 years to "enforce" their trademark.  They obviously waited because they knew that if they tried anytime before the mandatory 5 year waiting period was up they would have many complaints and contests to the trademark.
> 
> Smells fishy to me, and evil.




Actually, we've done this for many years now. There have been multiple fans over the years who have created their own tools and named them along the lines of "Jim's Army Builder". In each instance, we have contacted them and required them to change the name to something else.

This is simply the first time that the process has become a public one.


----------



## lonewolfdevel

falcarrion said:


> I think Lone wolf did nothing wrong. They where in the right for what they did.
> PP started the fire, then shut down talk about it on there sight.
> Why did they do that?
> Why did they even print what was sent?
> Was it just to start trouble?
> I would like for both parties to come here and tell there side of the story.
> We wouldn't want another Salem witchhunt to happen do we?




Well, I'm here to answer questions as best I can for our side of the matter. I'm not going to theorize publicly about Privateer's actions, but you've posed some questions that I've also asked myself.

Thanks for keeping an open mind in this and seeking to get the facts.


----------



## DaveMage

lonewolfdevel said:


> The demand was...




Instead of demanding, woudn't a *request *have been a better first step?  (Or did you try that already?)


----------



## pawsplay

JohnRTroy said:


> Somebody mentioned Coca Cola.  Well, those were two works, Coca for the Coca Leaf (the original Coke had some cocaine), and Cola, a variant (but legit) spelling of the Kola nut.  So, two real words.  Combined they were enough of a Trademark.  Maybe its hard to see it now with the power the Coke brand has done over the years.




Interesting example. Coke tried to stop people from using Cola in the names of their drinks and was shot down.


----------



## Jared Rascher

I have a hard time believing that the only way to enforce the trademark was to take this drastic of a move.  Considering most of these references were made by people posting on a forum, and not Privateer Press themselves using the term, it seems very demanding to try and force another company to protect your trademark for you.

I'm honestly thinking that someone from Lone Wolf just posting a new thread that says "hey, remember the term Army Builder is ours, so remember that its not a generic term or something you can use to name your own program for army lists," possibly with a nice request to Privateer Press to sticky the thread, or maybe just remembering to jump on once in a while to post a new thread when the last one gets archived.

I have to say that the way this was demanded of another company makes me very leery of further use of Lone Wolf's products, and I quite liked Hero Lab for making up Pathfinder characters.


----------



## jaerdaph

WOW THIS RELLY IS WORST THAN TEH 9/11s!

HOW COULD U DO THIS LONE WHITE WOLFS? HOW COULD U?!?


----------



## lonewolfdevel

Morrus said:


> If you read the linked documents, it was a demand that they censor the conversation on their forums - accompanied by a 72 hour deadline pending legal action.  There's no "what was likely" about it - the documents are plainly readable.




Morrus, it sounds like you managed to conflate the two separate issues as well here. There was a demand to edit/remove posts referring to "Jim's Army Builder" and the like. There was also a demand to inform us how Privateer wanted to handle the education of its community about the trademark issue. That's it.



Morrus said:


> Including a legal threat and deadline at the outset




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").



Morrus said:


> 2) Attempting to regulate conversation about such products by the general public, as opposed to PP's own use of trademarked terms; and putting the onus on PP to defend LW's trademark to the general public.




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. 

Please re-read the message again. If you have a specific citation you want to discuss, I'll be happy to do it.



Morrus said:


> I've received similar legal threats in the past. Folks claiming that *I* am libelling them because someone used a comminication medium I provided to say something. This is akin to claiming a telephone company is liable for what is said on the communication medium _they_ provide.




You're absolutely correct with this. And it is quite possible that your reaction to the message we sent Privateer is partially colored by sensitivity to being accused of things improperly. Please re-read the message we sent with this in mind and I'll be happy to answer questions you still have.


----------



## Umbran

lonewolfdevel said:


> There was no direct legal threat in the message.




_"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.  

You may not be terribly familiar with our community, and I offer you a bit of advice - in the face of that quote, I think continued plain denials will not serve your interests well.


----------



## jaerdaph

*!*

PPL PLS! _JIM'S ARMY BUILDER_™! is for teh lone white wolfs SAD MOOD VAMPIRES game only and nothing else!!!


----------



## Steerpike7

lonewolfdevel said:


> 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

lonewolfdevel said:


> 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...


			
				lonewolfdevel
The first thing that I need to make clear is that we [I said:
			
		

> *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 Builde_r® 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

Umbran said:


> _"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

JohnRTroy said:


> 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.



lonewolfdevel said:


> 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.


----------



## unan oranis

uh oh, the nerds are restless tonight!

If a few more gaming companies pull boners like this, does that mean wotc's "blunders" in grognard-relations be forgotten or even forgiven?


----------



## jdrakeh

Transbot9 said:


> 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.




I think the relevant portion of the Privateer Press legal policy regarding software is "We do not allow our materials to be used in any for-profit projects, of course." Army Builder is, last I checked, a for-profit project.

Since the likelihood is that those modules in question are made without the express consent of Privateer Press and Lone Wolf knows this, if I were a betting man, I'd wager their response would be something along the lines of "Up yours."

Likely with the defense of "We don't host the files, so we aren't responsible!" (As I pointed out earlier, though, this defense didn't work out too well for The Pirate Bay).


----------



## pawsplay

If you want to sleep well at night, _give away_ any IP you don't need. I don't think people who love games really went into the gaming business to become plaintiffs. If that is what your business becomes, you really have to ask yourself if it's worth it.

It would have been a helluva lot easier, cheaper, and more popular to simply rename Army Builder to something less generic.


----------



## billd91

unan oranis said:


> uh oh, the nerds are restless tonight!
> 
> If a few more gaming companies pull boners like this, does that mean wotc's "blunders" in grognard-relations be forgotten or even forgiven?




Do asylums let our their old lunatics simply because new lunatics appear? I think not.


----------



## Stormonu

pawsplay said:


> Interesting example. Coke tried to stop people from using Cola in the names of their drinks and was shot down.




I feel I should point out that down here in the south "coke" is a generic term for any fizzy soft drink.


----------



## jaerdaph

unan oranis said:


> uh oh, the nerds are restless tonight!




LOL! _Your Favorite Game_™ iz teh sux0r! NO FANTASY BORED GAME FOR TEH OLD SKOOLZ EVAR!


----------



## Dragonhelm

*On the flipside...*

Two really good things have happened because of this.

First, I am now a fan of Privateer Press on Facebook.

Second, I have discovered that Privateer Press is offering a Voltron miniatures game.  Now, I'm not a huge miniatures game fan, but this is Voltron!  I know where my discretionary dollars are headed.

<Tina Fey>
And for everybody playing the drinking game at home...*Army Builder*.  
	

	
	
		
		

		
			




</Tina Fey>


----------



## Holy Bovine

lonewolfdevel said:


> 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")




Dude, you're screwed.  Just admit you horribly messed up, issue a profound and sincere apology and hope and pray the community forgives you.  More than likely they will but not without some really heartfelt grovelling on your part.


----------



## El Mahdi

deleted


----------



## Glade Riven

jdrakeh said:


> I think the relevant portion of the Privateer Press legal policy regarding software is "We do not allow our materials to be used in any for-profit projects, of course." Army Builder is, last I checked, a for-profit project.
> 
> Since the likelihood is that those modules in question are made without the express consent of Privateer Press and Lone Wolf knows this, if I were a betting man, I'd wager their response would be something along the lines of "Up yours."
> 
> Likely with the defense of "We don't host the files, so we aren't responsible!" (As I pointed out earlier, though, this defense didn't work out too well for The Pirate Bay).





Considering that their download page has no legal disclaimer, nor are they linking an actual website (just a secondary download server), Privateer Press could easily kick their butt in a lawsuit. Forcing action to be taken attracts attention (aka poking the bear), in which case this whole "unofficial cease & desist" could backfire further. This plan has a bit of a gnomish flare:
Send "Unofficial" threat of lawsuit to get our way
Uh...
PROFIT!
Now, the damage control looks to be:
Attempt to spin an obviously threatening letter to a way that appears less threatening by assuming role-players are (stereotypically) overeducated critical thinkers (I fit this stereotype, so I am self referancing)
Uh...
PROFIT!
Perhaps my perception is technically incorrect, but the first rule of PR is Perception = Reality (The second rule is that_ One does not talk about Fight Club_).


----------



## arscott

lonewolfdevel said:


> 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

lonewolfdevel said:


> 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

pawsplay said:


> 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



			
				Consumerist said:
			
		

> 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

pawsplay said:


> 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

jaerdaph said:


> 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 Builde_r® 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

Dire Bare said:


> 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

Relique du Madde said:


> 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

lonewolfdevel said:


> 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.


----------



## lonewolfdevel

DaveMage said:


> Instead of demanding, woudn't a *request *have been a better first step?  (Or did you try that already?)




With regards to addressing the posts with direct trademark infringement, immediate action is always required. If someone was in the midst of vandalizing your car, would you walk up to a police officer and say...

"If you wouldn't mind, could you please be so kind as to give me a hand over here. It seems that someone is vandalizing my car. Oh, no hurry. After you finish your coffee would be fine. Or perhaps tomorrow, if you're about to end your shift."

In the context of IP enforcement, that's a reasonable analogy to what you're asking here. Also, in the context of IP enforcement, sending a message that doesn't involve the attorneys is generally viewed as a "request". Albeit, one that entails urgency to deal with the problem.

Could we have separately made a gentle request regarding the education of the user community? The two issues were highly inter-related, so action on one would inherently involve the other. That meant that the best way to handle the issues was within a single message. Remember also that the only thing we required from them in this matter was to let us know whether they wanted to handle the process themselves.


----------



## S'mon

Digital Milllenium Copyright Act - the clue is in the name.  Jeez, *rolls eyes*

Making legal threats against people when you don't know what you're doing is a really bad idea.  That's what lawyers are for.  A wise man (Steve Sailer) pointed out that the difference between 5 years in jail for blackmail, and a multimillion dollar payoff "in settlement of threatened lawsuit", is getting a lawyer to write your letter for you:
Steve Sailer's iSteve Blog: Legal vs. Illegal Blackmail


----------



## S'mon

lonewolfdevel - I'm only going to say this once.  US TM law requires you to enforce your mark vs infringers, or risk losing it.  An infringer is someone using your mark (or similar) *commercially, ie in connection with an offering of same or similar* goods or services,* such that a customer might think their company/product/service was associated with yours - same company, licensed product etc.  Using a term in a bulletin board discussion is very obviously not commercial use.

*Famous marks can get protection vs non-similar uses that tarnish or dilute the mark, but while that might help WoTC sue the manufacturer of Dungeons & Dragons sex toys, it won't help you as your mark is not famous.

As a separate issue, a mark risks losing protection if it becomes a generic term, but that does not give you any legal right to sue people who use the term generically!  Businesses engage in customer education campaigns to try to keep terms like Xerox and Hoover non-generic, but they don't, and can't, sue the public.

Finally, Copyright law is not the same as Trade Mark law.  Never never never mix up the two.


----------



## Jonny Nexus

ExiledinElysium said:


> 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)




There's very recently (apologies if someone's already mentioned this) been a similar case in the UK, involving the issue of you can't "hide" something for x years and then come out of hiding.

Basically, you can't just build a house in the UK, you need permission, and it's almost impossible to get permission to build a new house on rural land. But if you do built it anyway, and no-one complains for four years, it's automatically granted retrospective planning permission, so...



> A farmer who secretly built a castle and lived in it for four years while it was hidden behind bales of straw was ordered to demolish it by a High Court judge today.
> 
> Robert Fidler hid the mock Tudor house behind hay bales stacked 40ft high while it was being built in an attempt to avoid having to apply for planning permission.
> 
> ...
> 
> Then in August 2006 Mr Fidler ripped down the disguise and the castle was revealed in all its glory. He applied for a certificate of lawfulness on grounds that it must now be lawful having stood for four years without any objections.
> 
> Farmer must demolish castle he hid behind straw bales | News




And he lost. They ruled that the four years starts from the point that you finish the building work and unveil your house to the world, that the the wall of straw bales constitutes part of the building work, and so the clock doesn't start ticking until they come down. And they also had some words about not allowing people to profit from deliberate deceptions.


----------



## lonewolfdevel

KnightErrantJR said:


> I have a hard time believing that the only way to enforce the trademark was to take this drastic of a move.  Considering most of these references were made by people posting on a forum, and not Privateer Press themselves using the term, it seems very demanding to try and force another company to protect your trademark for you.




Removing or editing direct references to tools that incorporate a company's trademark within their name always requires immediate action. Unless, of course, the company wants to risk losing the trademark through implicit consent to its use.

When a forum is involved, the forum owner must be contacted to deal with content that infringes. That's the way it officially works, because the owner is the only one with such control. If someone posted references to their new tool, "Jim's Army Builder", here on ENWorld, we'd have to contact Morrus to have it addressed.

We did _*not*_ demand that Privateer take any further action to police our trademark. We gave them the _*option*_ to control how it was handled, since it's their site and we wanted to let them have whatever level of control they wanted. It was a courtesy. If they'd said "no", then we would have handled it entirely.


----------



## lonewolfdevel

Umbran said:


> _"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.
> 
> You may not be terribly familiar with our community, and I offer you a bit of advice - in the face of that quote, I think continued plain denials will not serve your interests well.




To my knowledge, in situations like this, the following sequence of events generally occur:

Step 1. Communications that don't involve the attorneys. This is optional, but the approach we took with Privateer.

Step 2. Communications that involve the attorneys, incorporating formal demands and with specific consequences of legal action.

Step 3. Formal legal action.

Step 1 leads to Step 2. Our message was Step 1. Privateer - the audience for the message - knows this quite well. 

_*PLEASE NOTE:*_ The original message was sent to Privateer and was _*not written*_ for an audience that has no familiarity with IP enforcement processes. So it's not surprising the many readers in the gamer community don't understand the process. 

However, I'm honestly stunned at how many people are taking offense at something for which they don't understand the process. Seriously, if you went to a foreign country and witnessed a bizarre ritual that seemed wrong to you in some ways, would you take offense at it? Or would assume that maybe you don't have all the facts and need to better understand what's going on before rendering judgement?

I'd like to think the latter, but my experiences over the fallout from this matter imply the former may be much more common. As you can imagine, that's extremely frustrating.


----------



## lonewolfdevel

Steerpike7 said:


> 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.




The goal was to avoid getting counsel involved in this initially, since it was felt that doing so would be viewed as more confrontational than the informal message. In hindsight, that was likely the wrong choice with Privateer. Lesson learned.

Beyond that, I'm not an attorney and so I am unable to respond to your other points. However, I will definitely bring them up with our attorney tomorrow to gain some insight.


----------



## FireLance

lonewolfdevel said:


> _*PLEASE NOTE:*_ The original message was sent to Privateer and was _*not written*_ for an audience that has no familiarity with IP enforcement processes. So it's not surprising the many readers in the gamer community don't understand the process.
> 
> However, I'm honestly stunned at how many people are taking offense at something for which they don't understand the process. Seriously, if you went to a foreign country and witnessed a bizarre ritual that seemed wrong to you in some ways, would you take offense at it? Or would assume that maybe you don't have all the facts and need to better understand what's going on before rendering judgement?
> 
> I'd like to think the latter, but my experiences over the fallout from this matter imply the former may be much more common. As you can imagine, that's extremely frustrating.



It's a sad fact of human nature that most of us tend to automatically assume that _*the other guy*_ is wrong. And not only wrong, but evil. Or maybe it's just us gamers who have been conditioned to act this way because most of the creatures we meet in an adventure _*are*_ usually evil, wrong, and out to kill us.


----------



## Lanefan

@ lonewolfdev:

If you don't want people using your product's name in a generic manner, my suggestion would be to come up with a more original - and thus less generic - name for your product.  Given your company's name, something like Wolf Players' Army Construction Kit (a.k.a. WolfPACK) ought to do.  And seeing as it took me less than a minute to dream that name up, surely someone on your team can do better.

And if your product's name then gets popular enough that people - not just gamers, but the general public - use it generically anyway, I'd say you're in good shape.

Lanefan


----------



## lonewolfdevel

ExiledinElysium said:


> 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.




I'll try to explain. There were two issues cited in the letter. Issue #1 was with references like "Jim's Army Builder". Issue #2 was with the use of the mark in a generic manner. The solution to #1 was to edit/remove the specific posts referencing "Jim's Army Builder". The solution to #2 was to educate the user community and we asked Privateer to indicate whether this was something they wanted to be involved in.

With regards to #2, we could have readily posted about the issue on their forums and seen to the matter ourselves. However, most site owners prefer to have control over such matters, so we presented the option for Privateer to do this if they preferred. This was intended as a courtesy - certainly not a requirement. The letter asks for Privateer to tell us whether they wanted to do so.

As for all of the posts that misused our trademark, well, we can't change history. It occurred. So no changes to the individual posts were required. However, a new post could be readily appended to each of those threads that flagged the problem to future posters in that thread and linked to a central post that provided a full explanation. All that was assumed to be our responsibility as the trademark holder, unless Privateer preferred otherwise.



ExiledinElysium said:


> Finally, why would it be so terrible in theory for a company's product name to become synonymous with the function?




That's a valid question. According to our IP attorney, striving for that could potential lead to genericization of the trademark. So the goal is a balance of trying to establish the brand prominently while also not becoming a generic term.



ExiledinElysium said:


> 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?




According to our IP attorney, it's a problem. I completely see your point, but I also have to believe that our IP attorney sees something that I'm missing. So we take action on these things.

Thanks for taking the time to outline all your thoughts on this.


----------



## lonewolfdevel

pawsplay said:


> Does anyone think it's a coincidence these letters are going out now instead of, oh, a couple of years ago?




We've been doing this for years. This is the first time it's become highly visible. That's the only coincidence here.


----------



## S'mon

lonewolfdevel said:


> According to our IP attorney, it's a problem. I completely see your point, but I also have to believe that our IP attorney sees something that I'm missing. So we take action on these things.




If your IP attorney is telling you to threaten legal action over use of the phrase Army Builder in bulletin board discussion, s/he is giving you very bad advice.

Edit:  They are right of course that you have a problem in that your mark is very weak, being apparently a generic term in common use, and the solution is to strengthen your mark by increasing customer association of the phrase Army Builder with your particular army builder software.  If someone else was offering army building software under an Army Builder mark then you have a case against them.  You have no case against bulletin board operators or users and should not be threatening them.

This is me, I'm not a practicing lawyer but I teach copyright & TM law in the UK to current and future lawyers:
http://westminster.academia.edu/SimonNewman


----------



## lonewolfdevel

Terramotus said:


> 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.




There were two issues cited and two actions that were called for. Issue #1 was the use of our trademark in the names of multiple tools created for Privateer's games (one specific example: "Warmachine/Hordes Army Builder"). Action #1 was that references to these directly infringing tools needed to be removed.

Issue #2 was educating the user community. Action #2 was to inform us whether this was something they wanted to do or if they would leave it to us. If education of the user community did not occur, then it was quite likely that someone else would create a new tool named "Fred's Army Builder". That would necessitate us having to contact Privateer about removing those references. With education, the likelihood of such a mistake would be mitigated, which would in turn mitigate the need for such removals in the future. So the education would both achieve an awareness of the trademark _*and*_ avoid problems in the future.

In hindsight, could the language have been refined in the message so that it would be less open to the various interpretations presented here? No question. Was the message incompetently written? Everyone here is their own judge and jury in that regard.



Terramotus said:


> 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.




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.


----------



## aboyd

lonewolfdevel said:


> Seriously, if you went to a foreign country and witnessed a bizarre ritual that seemed wrong to you in some ways, would you take offense at it? Or would assume that maybe you don't have all the facts and need to better understand what's going on before rendering judgement?.



Perhaps a more accurate parallel is this.  If you were a native citizen of the USA and knew the DMCA law well because you had to deal with it regularly, would you take offense when you saw an amateur botch it?  What if that amateur specifically _disclaimed knowledge of the law_ and then got upset with others because they "don't understand the process?"



lonewolfdevel said:


> We did _*not*_ demand that Privateer take any further action to police our trademark. We gave them the _*option*_ to control how it was handled, since it's their site and we wanted to let them have whatever level of control they wanted. It was a courtesy. If they'd said "no", then we would have handled it entirely.



Except even that is too much.  Your letter tells PP you will "educate your users about this fact via posting ourselves on your forums."  However, every previous example I can find shows that such education campaigns have to happen on your dime, or on your forums, or with ad space you buy, or with people you contact without violating forum posting rules.  There is no US law I know of which says you can impose yourself into a forum for such "education" of its users.  The UK has a law which allows someone to reply in the same forum in which they are discussed, so that would _kinda_ give you a right to post in reply to something, if this were in the UK and if any discussion of your product still existed on the forums.  But neither are the case.  So that whole section of your letter is bogus.  He doesn't have to handle this education thing in _any_ way, and doesn't even have to let you on his forum so you can do it yourself.

Of course, he _could_ allow you to do it just to be nice to you.  However, saying "I'll set my lawyers on you if you don't do this right now!" probably means that PP isn't interested in voluntarily being nice to Lone Wolf.

You want to educate people about your product and the proper way to refer to it?  Follow the law and buy ads, publish articles, and remember that _no one is obligated to give you a platform, at least not in the USA.*_  Sorry dude.

As mentioned in another post, if your IP lawyer disagrees, great, follow his advice.  But if he came knocking on my forum's door, I'd refuse until he cited law, because I not only don't believe it exists, I've read certain things that flat-out state it doesn't exist.

(I run a forum for writers, and one of the discussion areas is a private section that discusses publishers.  That discussion area is closed to publishers so that writers can feel safe talking about those publishers without reprisals.  I've had publishers ask and then _demand_ that they get in there so they can butt heads, post rebuttals, and so on.  But that would completely undermine the safety of those writers, so there's no way in hell I'd ever say yes, and no publisher has found a law to force me to capitulate yet.  I have removed a couple copyright violations, but I can do that without allowing the publisher to come in and "educate" anyone.)

* Some political ads fall under a law imposing "equal time for the opposing group."  But that doesn't apply here.


----------



## lonewolfdevel

S'mon said:


> lonewolfdevel - I'm only going to say this once.  US TM law requires you to enforce your mark vs infringers, or risk losing it.  An infringer is someone using your mark (or similar) *commercially, ie in connection with an offering of same or similar* goods or services,* such that a customer might think their company/product/service was associated with yours - same company, licensed product etc.




So are you saying that we should not be stopping fan-created tools from using our trademark in their names? That flies in the face of what our IP attorney has told us repeatedly. Please explain, since it's conceivable our attorney is urging us to take actions that aren't actually necessary and that are just ticking people off without actually benefiting us.



S'mon said:


> Using a term in a bulletin board discussion is very obviously not commercial use.




Agreed.



S'mon said:


> As a separate issue, a mark risks losing protection if it becomes a generic term, but that does not give you any legal right to sue people who use the term generically!  Businesses engage in customer education campaigns to try to keep terms like Xerox and Hoover non-generic, but they don't, and can't, sue the public.




Agreed. I must have missed it - where did that become an issue here?


----------



## jaerdaph

@Dire Bare:







LOL!


----------



## lonewolfdevel

aboyd said:


> Perhaps a more accurate parallel is this.  If you were a native citizen of the USA and knew the DMCA law well because you had to deal with it regularly, would you take offense when you saw an amateur botch it?  What if that amateur specifically _disclaimed knowledge of the law_ and then got upset with others because they "don't understand the process?"




To be fair, you did pull this quote out of a post regarding a very different aspect of the discussion. I'm not saying it's inappropriate here, but there's been a bit of quoting out of context in this matter, so I'm a bit sensitive when that happens yet again. 



aboyd said:


> Except even that is too much.  Your letter tells PP you will "educate your users about this fact via posting ourselves on your forums."  However, every previous example I can find shows that such education campaigns have to happen on your dime, or on your forums, or with ad space you buy, or with people you contact without violating forum posting rules.  There is no US law I know of which says you can impose yourself into a forum for such "education" of its users.




Then I need to add this to the next conversation with our IP attorney. It's quite possible that I didn't grok something he told me here. Crap!

Thanks for the pointers and the discussion points.


----------



## jaerdaph

Methinks their attorneys only handled the one Forward Kommander C&D letter for Lone Wolf. Methinks Lone Wolf decided to BULLY everyone else all on their own, thus the ignorance of actual law in their posts on various message boards. Methinks the public relations damage is irreversible now - Lone Wolf has become the new Outlaw Press for 2010 in the minds of gamers. Even backpeddling won't help them now.


----------



## arscott

lonewolfdevel said:


> _*PLEASE NOTE:*_ The original message was sent to Privateer and was _*not written*_ for an audience that has no familiarity with IP enforcement processes. So it's not surprising the many readers in the gamer community don't understand the process.
> 
> However, I'm honestly stunned at how many people are taking offense at something for which they don't understand the process. Seriously, if you went to a foreign country and witnessed a bizarre ritual that seemed wrong to you in some ways, would you take offense at it? Or would assume that maybe you don't have all the facts and need to better understand what's going on before rendering judgement?



I would not be so quick to accuse the patrons of this forum of ignorance in these matters, especially when your own organization seems to confuse Copyright law with Trademark law.


----------



## Doc_Klueless

arscott said:


> I would not be so quick to accuse the patrons of this forum of ignorance in these matters, especially when your own organization seems to confuse Copyright law with Trademark law.



Especially since some of the patrons are either lawyers who have some expertise in the matter or instructors who teach lawyers about these matters. It appears that Lone Wolf either got bad legal advice or didn't actually seek legal advice in this particular matter.

Gamers never forget and seldom forgive. Bad step for Lone Wolf.


----------



## S'mon

lonewolfdevel said:


> So are you saying that we should not be stopping fan-created tools from using our trademark in their names? That flies in the face of what our IP attorney has told us repeatedly. Please explain, since it's conceivable our attorney is urging us to take actions that aren't actually necessary and that are just ticking people off without actually benefiting us.




Some IP attorneys may claim that offering of free fan-created software constitutes 'commercial use' of a mark: use in the course of a trade offering goods or services.  My reading of the Lanham Act doesn't support that interpretation, but I am not an expert on it (I spend my time on the UK's EU-derived 1994 Trade Marks Act) and certainly some US judges seem remarkably willing to stretch the statutory definition.

Secondly, as a practical matter you don't want people using your mark as a generic term for a certain sort of software; you have a problem because your mark is highly descriptive of what that software does.  But technically people could use the mark descriptively "I was so hungry, I hoovered up that seafood" while the mark itself remains distinctive.  

So, IMO:  "I use Zappot Beeblefutz software as my army builder" probably does not directly threaten your mark (this is a finely graded area though, no guarantees).  And anyway it's not something you can or should take action against: here the phrase is used *descriptively*, which is a defense to an allegation of TM infringement, not *distinctively*, as a mark of origin.

(Incidentally, in the UK TM owners cannot lose their mark because it's used generically by the public, as long as other businesses don't use it generically).

None of this is to say that you should not take action against a product marketed by another company as "Zaphod Beeblefutz Army Builder" - you need to do that to avoid genericisation of the mark.

As a practical matter, I suspect that the commercial benefit to you of maintaining a monopoly over the Army Builder mark may be outweighed by the negative publicity that doing so gets you, but that's your call to make.


----------



## S'mon

lonewolfdevel said:


> Then I need to add this to the next conversation with our IP attorney. It's quite likely that I didn't grok something he told me here. Crap!




Yeah, it's quite complicated.     Commercial law is not designed as a tool for the little guy, including the mom & pop business operator.  Even medium-sized companies like TSR can often screw up badly when they try to deal with the law - big companies like Hasbro seem to usually have the resources not to make the obvious mistakes, but even they can get caught out.


----------



## aboyd

Caedwyr said:


> Consumerist said:
> 
> 
> 
> 
> 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.
Click to expand...


Here is another guy who filed an errant DMCA takedown notice.  I think it's amusing that a guy who wrongly used the DMCA to try to shut down bad publicity for himself was ordered as part of the settlement to _make a video about it and give it to the defendant so he could post it online_:

[ame=http://www.youtube.com/watch?v=K8srbIeV4B4]YouTube - Michael Crook Apologizes to the Internets[/ame]


----------



## Army Builder

Would you all people please just leave me alone, thanks?


----------



## Relique du Madde

Army Builder said:


> Would you all people please just leave me alone, thanks?


----------



## JohnRTroy

Two memes seem to be creeping up.  The first whether or not Lone Wolf went too far.  That's debatable (which is what we are doing).

The second thing is people are offended by the term "Army Builder" now being a trademark.  While I've discussed this before, the following other terms are registered trademarks:  Closet Builder, Profit Builder, Pipe Builder, Turf Builder, and Blossom Builder.  These are also "common phrases", yet they were approved as well.  Combining common words to make a trademark is a practice that goes back almost a century (as I said before--Coca-Cola).  There are limits to the restrictions of Trademark law so it's not trying to restrict free speech.

It doesn't sound like they did anything "sneaky" because others have done it.  Based on Rob's statements, it sounds like before the "5 year period" after approval they did inform others.  And although somebody said Army Builder was "google bombed", I think having an official site and a registered trademark is the reason why Army Builder shows their site as number one, because it was popular, not because of the recent events.

Legal notices are sent all the time.  We don't normally see everything.  If every company decided to publically air dirty laundry, none of you would ever enjoy gaming because people would keep getting caught up in he said/she said nonsense.  



> Gamers never forget and seldom forgive. Bad step for Lone Wolf.




Only if we're have eidetic memories and are all sociopaths or psychopaths.  We're not.  

To myself, this is a tempest in a teapot.  The only thing that happened is one company probably got a little too overzealous, and another company decided to air that in public (which was bad form IMO).  Nobody got sued, nobody got hurt, no lives were lost.  (ENWorld IMO is actually exacerbating the issue by putting this on the front page.)

ETA:  Ah, I see we are now resorting to 4chan style postings now...jeez...


----------



## mxyzplk

"It's all so complicated!"

Do what people normally do when someone makes a ridiculous request.  Ignore them.  I'm willing to bet you could take any Web page, including Lone Wolf's, and run a match on all trademarks in its text and come up with 100 hits.  Trademarking something doesn't remove it from the language.  If LW feels like they have to spout off about it, let them.


----------



## Relique du Madde

JohnRTroy said:


> Two memes seem to be creeping up.
> <SNIP>
> 
> ETA:  Ah, I see we are now resorting to 4chan style postings now...jeez...




Actually, it has been going on for almost a day now.  You just don't know where to look.

Besides, as far as net publicity goes, 4Chan are the best at getting it done.


----------



## avin

FREEEEEEEEEE AAAAAAAARMY BUIIIIIIIIIIIIILDEEEEEEEEEERRRRRRRRRRRRRR!!!!!!!

What a shoot on the foot...


----------



## JohnRTroy

Actually, they've been doing that to other people, as this thread shows.

Army Builder is a trademarked phrase - Heroscapers

It looks like they got the same letter, maybe without the 72 hour notice, and the guy complied, and he actually felt the company was "very cool" about it.


----------



## Glade Riven

lonewolfdevel said:


> With regards to addressing the posts with direct trademark infringement, immediate action is always required. If someone was in the midst of vandalizing your car, would you walk up to a police officer and say...
> 
> "If you wouldn't mind, could you please be so kind as to give me a hand over here. It seems that someone is vandalizing my car. Oh, no hurry. After you finish your coffee would be fine. Or perhaps tomorrow, if you're about to end your shift."
> 
> In the context of IP enforcement, that's a reasonable analogy to what you're asking here. Also, in the context of IP enforcement, sending a message that doesn't involve the attorneys is generally viewed as a "request". Albeit, one that entails urgency to deal with the problem.




It is one thing to run off punk kids breaking into your car by brandishing a shotgun. It is another thing to try to get the officer to enforce the law by brandishing a shotgun at him. Something akin to this would probably have worked:



> Dear Sir or Madam:
> It has come to our attention that there have been several violations of the usage of our trademark by users of your forum, and are very concerned about it hurting our brand. We are requesting that you work with us to rectify this issue, and would prefer that this is handled without resorting to the use of an attourney. If we do not hear a response within 72 hours, our company will have to assume that your company is not interested in rectifying this issue and have to take far more drastic action.
> 
> [Second paragraph details the issue and the suggested solution]
> [Conclude with thanking them for their cooperation]
> 
> Sincerelly,
> X




I'd spellcheck it first (I don't bother spellchecking forum posts). Often, it isn't what you say, it is how you say it. The example above still makes the demand..er.._request_, still has the threat of legal action, but is neither ham-fisted nor overly aggressive.



lonewolfdevel said:


> Could we have separately made a gentle request regarding the education of the user community? The two issues were highly inter-related, so action on one would inherently involve the other. That meant that the best way to handle the issues was within a single message. Remember also that the only thing we required from them in this matter was to let us know whether they wanted to handle the process themselves.




Not their responsibility.


----------



## lonewolfdevel

Hey Guys,

I'm not sure what more I can add to this discussion at this point, so I'm going to get some ZZZs. I appreciate the feedback from everyone, including all the bad stuff. It's definitely been one heck of a learning experience and I've got lots to talk about with the attorney tomorrow (er, make that later today). I'll check in again to see if there's anything further I can contribute, or to answer specific questions, but I'll otherwise step back and let the jury continue its debate.

Thanks, Rob


----------



## Xyxox

The saddest thing about this mess is I've been meaning to give up on my spread sheets and purchase Lone Wolf's Army Builder® for a while now. I've tried the demo and V3 looks very cool.

I'm willing to drop cash on software for gaming if it's something I see being useful and functional. Campaign Cartographer is a good example of this and I love the supplements.

Furthermore, tabletop wargaming is not the extent of my tabletop gaming. I love RPGs, especially Pathfinder and Mutants and Masterminds. I recently purchased the Savage Worlds PDF and will definitely be getting into this game. Since I donated to Haiti relief via the DriveThruRPG link, I have Cortex and Serenity PDFS, and like what I see in both. the point to this? I'm a potential cross sell customer because I'm attracted to Army Builder® due to my wargaming and can see uses for Hero Lab®. I like fiddling with software, too, so I'm interested in the full package there.

Bottom line, though, is this is a PR debacle and I'm holding off on any purchases for now. I'll wait and see how it smooths out, but for a company dependent on the IP of other companies for their product line to basically make a phony DMCA claim (come on, copyright law in a matter involving a trademark?), well, I have to wonder at what that company was thinking.


----------



## Mathew_Freeman

I'm going to be very specific.

My only objection to this whole thing is that a company A asked another company B to edit posts in their forum, and threatened legal action if they didn't.

I don't think any company has the right to _ask another company_ to do that. I may be legally wrong. I do think company A has a right to pursue perceived trademark copyright infringement themselves if they want to, but by going after the individuals concerned, not the forum they posted on.

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.


----------



## Piratecat

lonewolfdevel said:


> Hey Guys,
> 
> I'm not sure what more I can add to this discussion at this point, so I'm going to get some ZZZs. I appreciate the feedback from everyone, including all the bad stuff. It's definitely been one heck of a learning experience and I've got lots to talk about with the attorney tomorrow (er, make that later today). I'll check in again to see if there's anything further I can contribute, or to answer specific questions, but I'll otherwise step back and let the jury continue its debate.
> 
> Thanks, Rob



You get major credit for coming in to talk. Thanks for that.


----------



## Drkfathr1

Is this the same forum that was all "torches and pitchforks" over internet piracy? 

While "Army Builder" may be a very questionable term to trademark, it is a trademark and they do have a right to protect it. 

Even if said methods were clumsy.


----------



## DaveMage

lonewolfdevel said:


> With regards to addressing the posts with direct trademark infringement, immediate action is always required. If someone was in the midst of vandalizing your car, would you walk up to a police officer and say...
> 
> "If you wouldn't mind, could you please be so kind as to give me a hand over here. It seems that someone is vandalizing my car. Oh, no hurry. After you finish your coffee would be fine. Or perhaps tomorrow, if you're about to end your shift."
> 
> In the context of IP enforcement, that's a reasonable analogy to what you're asking here. Also, in the context of IP enforcement, sending a message that doesn't involve the attorneys is generally viewed as a "request". Albeit, one that entails urgency to deal with the problem.
> 
> Could we have separately made a gentle request regarding the education of the user community? The two issues were highly inter-related, so action on one would inherently involve the other. That meant that the best way to handle the issues was within a single message. Remember also that the only thing we required from them in this matter was to let us know whether they wanted to handle the process themselves.




In any business interaction, I prefer relationship building (when possible) instead of demands.  Even the largest corporation is made up of people.  And because of that, treating people with respect to start (instead of demands) would seem to me the way to go.  

Something posted to their forum (directed at their posters) like: "We have noticed increased use of the "Army Builder" brand name to describe programs not associated with the Army Builder trademark. Army Builder is Lone Wolf's software package that allows you to do [x]. While we appreciate the enthusiasm of fans, we hold the trademarked name "Army Builder" (and have since 2004) and are required to defend it as per the law.  For the sake of this trademark, we ask that you please not use the name to describe your own system of [x], as then we might have to get lawyers involved, and really, don't they have enough involvement in things as it is?  I am happy to answer any questions about this."  Or something similar.


You could probably come up with better language than this, but I think you get the point.  Better to talk with someone about a concern than dictate to them.  (Unless it comes to that after friendly attempts to correct the situation.)


----------



## jaerdaph

I just flipped a coin to pick what side I would be on.


----------



## Xyxox

Drkfathr1 said:


> Is this the same forum that was all "torches and pitchforks" over internet piracy?
> 
> While "Army Builder" may be a very questionable term to trademark, it is a trademark and they do have a right to protect it.
> 
> Even if said methods were clumsy.




In a case where somebody is using the mark to denote roster creation software, they have no choice but to defend their IP.

In a case where somebody uses the phrase "army builder" in a generic manner or to describe the function of a piece of software not related to Army Builder®, there is no legal recourse for Lone Wolf. They can attempt to educate (as Xerox, Hoover, and Kleenex do), but conversational use of a phrase included in a mark is not actionable.

I've called my spreadsheets "army builder sheets" for decades. I literally began creating "army builder sheets" in the eighties, first on Multiplan® and later on Lotus 123®. The fact that I just referred to these sheets as army builders is not actionable as I am not infringing upon Lone Wolf's mark. I am using terminology to describe functionality, not marking a competing product.


----------



## Steerpike7

Just thought I'd make a quick statement about what bothers some of us here, and also make some general comments on trademark law just as an FYI for those who are interested.

Trademark owners do have a duty to police their marks.  That is true; if they don't police them they can lose them. That's why a big company might send a cease and desist letter to a mom and pop operation that is infringing a mark, even when the small operation doesn't really concern the big company in any competitive sense.

But you have to police the mark within the bounds of the protections afforded to you by the law.  Here, Lone Wolf is couching their claims in Dilution, and in my opinion it isn't likely their marks have the requisite fame to sustain a Dilution cause of action to begin with. Even if you could make that case, you've got to meet the elements of Blurring or Tarnishment (the types of dilution), and again I think that's problematic.  

Assuming you could do the above, Lone Wolf makes a claim that PP is somehow obligated under the DMCA (a copyright act) to police their forums and/or educate their forum users with respect to Lone Wolf's TRADEMARKS.  If Lone Wolf has a specific provision of the DMCA in mind here, I'd be interested in seeing it.

As for the mark ARMY BUILDERS itself, I do not think it is generic. I do think it is descriptive, and descriptive marks can be registered if they've become distinct in the minds of the consumers for the specific goods or services at issue (if they become distinct, they're said to have acquired 'secondary meaning,' and even though they're descriptive the USPTO will register them).

FYI, there are different types of trademarks with different levels of protection.  

Fanciful/arbitrary marks are the strongest (for example "Apple," for computers or "Kodak" for cameras). These words have nothing inherently to do with the products they are tied to. They only come to be associated with a certain product through the trademark owners use of the marks.

Suggestive marks have the next highest level of protection. They hint at the underlying goods or services but don't really describe them. They are said to suggest a "quality or characteristic" of the mark. I believe GREYHOUND is a suggestive mark for a bus line, because the word suggests speed, movement, etc. but it doesn't actually describe a bus service.

Descriptive marks are next, and are weaker than the above.  If a mark is merely descriptive, and has no additional meaning in the minds of the consumers, it can't be registered on the principal trademark register (it can go on the secondary register, but I'm not going to get into all that).  Trademarks like VISION CENTER have been found to be descriptive.  They describe one or more characteristics of the goods or services, but they're not generic.  This is where, it seems to me, ARMY BUILDER falls.

Finally, generic words cannot be registered at all. You can't start a paper company and try to register PAPER as a trademark.  Marks like ASPIRIN used to be registered marks, but they became generic in the language and can't be protected any more.

A descriptive mark CAN become generic over time, and trademark owners do try to police this. For example, if you look at writer's magazines you'll sometimes see ads from Xerox and Kleenix asking writers not to use their words generically. They don't want a writer to say "Tom xeroxed a stack of papers."  If xerox becomes generic for photocopying, they lose their rights in the word. 

But again, policing has to be done within the bounds of the rights afforded to the trademark owner. Trademark owners can be liable themselves if they attempt to strong-arm the competition beyond the boundaries of what trademark law allows.

And none of this is legal advice to any party involved or anyone else in the forums.  Just some info off the top of my head before I get in the car and go to work.


----------



## S'mon

Steerpike7 said:


> Trademarks like VISION CENTER have been found to be descriptive.  They describe one or more characteristics of the goods or services, but they're not generic.  This is where, it seems to me, ARMY BUILDER falls.




Bravo Steepike, you do a better precis than 90% of my Undergrads could manage.    But I think Army Builder is a much weaker mark than Vision Center.  People don't talk generically about going to the "vision center" for new glasses, they go to the optician's.  Whereas it's clear that people do talk about using generic army builder software to build their army rosters.  

My knowledge of army roster building software doesn't extend much beyond this thread, but it seems to me that if the USPTO did any kind of enquiry on marks the way European TM offices do then this would not have been registered.   As it is they leave it 5 years for challenges to emerge, and this area of business is obscure enough none did, so the mark is currently valid (can't be struck off without a court action).  If it came to court though I'd think the balance of probabilities would be heavily against it surviving.  

BTW here's some advice on s. 15 Incontestability - note that a filing of Incontestability does not prevent a challenge for genericness or functionality:
Incontestability: Does Anybody Really Understand It? | The Association of Patent Law Firms


----------



## Jared Rascher

While I respect the Lone Wolf presence to defend their position, and also greatly respect the amount of potential grief that could open up, I have to say that I'm not thrilled to have all of the concerns expressed on the forums here catagorized under "you don't understand" or "you are confusing multiple issues."

I have zero problem with the fact that they have trademarked Army Builder.  I have zero problem if they had asked Privateer to change, for example, a reference that they themselves made to their own program as an "Army Builder."   I do have a problem with them demanding that those two words cannot appear together without a trademark, or that they cannot appear on the forums at all, and Privateer has to bear the brunt of editing their boards because of this.

I can understand that even "free" sites might be a problem for Lone Wolf, but again, that isn't Privateer's problem.  At worst I could see asking specifically for Privateer to strike a link in a forum leading to a free resource that infringes on a name, for example.

While it is a slightly different issue, this would be similar to WOTC not only asking Ema's Character Sheets to take down their character creation section, but also to go onto, say, EN World and demand that the site edit all references to the site.  If you have a "little guy" infringing on your trademark, its your job to track them down and tell them what they did wrong, not someone that may or may not even know what they are talking about on an internet forum.

Also, while I can appreciate that Lone Wolf has had legal counsel on the matter, it seems to me that its not much of a leap of the imagination to realize that even lawyers can make mistakes regarding the law, so I'm not completely convinced that this is the One True Way of having handled this situation.


----------



## rjdafoe

lonewolfdevel said:


> 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 can't point to a specific instance, but I can assure you this was the case. Before the internet, there were BBSs and I can say for certain, that army builder was used frequently when building armies for miniature games through FidoNet messages, WWIV network messages and any number of other BBS networks that were in use back then. 

I am sure somebody, somewhere has some archive of these messages. I assure you - I am not imagining this. I PARTICIPATED in this in the mid 1980s into the early 1990s at conventions, BBS messages, and face to face converations.

EDIT: 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.


----------



## JohnRTroy

S'mon said:


> My knowledge of army roster building software doesn't extend much beyond this thread, but it seems to me that if the USPTO did any kind of enquiry on marks the way European TM offices do then this would not have been registered.   As it is they leave it 5 years for challenges to emerge, and this area of business is obscure enough none did, so the mark is currently valid (can't be struck off without a court action).  If it came to court though I'd think the balance of probabilities would be heavily against it surviving.




Maybe in Europe, but I posted several examples of descriptive trademarks in other posts.  Just do a search for "builder" on the USPTO search form.  Combinations of nouns and verbs work.  There's enough legal precedent and practical use that I don't see this being a special case.


----------



## S'mon

KnightErrantJR said:


> Also, while I can appreciate that Lone Wolf has had legal counsel on the matter, it seems to me that its not much of a leap of the imagination to realize that even lawyers can make mistakes regarding the law, so I'm not completely convinced that this is the One True Way of having handled this situation.




Even when lawyers get the law right, as in "You have a case against X" or "It's not illegal to do X", they can get the PR wrong.  Public Relations is not their job.  

And they do get the law wrong - well into the '90s I'd still be talking to US lawyers who thought copyrights had to be registered, for instance.  And I remember talking to a T$R in-house lawyer ca 1995 who seemed genuinely convinced that copyrights had to be proactively enforced, Trade Mark style.


----------



## Dragonhelm

Lanefan said:


> If you don't want people using your product's name in a generic manner, my suggestion would be to come up with a more original - and thus less generic - name for your product.  Given your company's name, something like Wolf Players' Army Construction Kit (a.k.a. WolfPACK) ought to do.  And seeing as it took me less than a minute to dream that name up, surely someone on your team can do better.




I'd like to second this.  WolfPACK would be a great name for Lone Wolf's product.  They could put, "The Original Army Builder" as a tagline for the product as a nice tie-in.  In essence, you relaunch the brand with a spiffy new name and then say that you incorporated the suggestion from the public in order to help with the PR.  

If Lone Wolf did that, and issued an apology, they might come out of this with a much stronger trademark that wouldn't cause these issues and, hopefully, with a better image.  People are more likely to forgive companies that admit mistakes.  Otherwise, I fear that Lone Wolf has crafted an online legacy that they really don't want.

Again, I believe success comes from building your own house and not tearing down the houses of others.  Just make certain that the house you build is not the doghouse.


----------



## S'mon

JohnRTroy said:


> Maybe in Europe, but I posted several examples of descriptive trademarks in other posts.  Just do a search for "builder" on the USPTO search form.  Combinations of nouns and verbs work.  There's enough legal precedent and practical use that I don't see this being a special case.




A mark can be descriptive and still valid, even in the UK (though apparently not EU-wide, going by the ECJ finding in _Doublemint_), as long as the public has come to associate the descriptive phrase with a particular product.  The example we use for our students is Sweet'n'Low for artificial sweetener.  The mark still has to be _capable of distinguishing_ one company's product from another company's, or else it's generic and not protectable.  

Note that a publicity campaign to raise awareness can increase distinctiveness, and that is exactly what this thread is!  I and lots of people who would previously have thought of 'army builder' as a generic term, now associate it with this product.  Even bad publicity can be beneficial, for TM distinctiveness.


----------



## JohnRTroy

Dragonhelm said:


> If Lone Wolf did that, and issued an apology, they might come out of this with a much stronger trademark that wouldn't cause these issues and, hopefully, with a better image.




You might have a point about apologizing to Privateer, but they don't need to apologize for getting the Trademark itself.  

Plus, they've likely invested time and money  get this trademark.  They should give it up for the sake of a few people going off the wall, whose potential "boycott" might only end up being a couple dozen people?


----------



## Obryn

lonewolfdevel said:


> I'd like to think the latter, but my experiences over the fallout from this matter imply the former may be much more common. As you can imagine, that's extremely frustrating.



I think you may be unfamiliar with the Internet.

-O


----------



## jaerdaph

As a tribute to Gary Gygax's memory, I am going to support a boycott.


----------



## Xyxox

JohnRTroy said:


> You might have a point about apologizing to Privateer, but they don't need to apologize for getting the Trademark itself.
> 
> Plus, they've likely invested time and money  get this trademark.  They should give it up for the sake of a few people going off the wall, whose potential "boycott" might only end up being a couple dozen people?




Yep, the trademark is legit. Enforcing it when it comes to other products that create rosters is legit, too.

They went overboard on demanding forums be policed for any use of the phrase, though.


----------



## Mournblade94

I use Lone Wolf and I like Lone Wolf.. I ahve heard of all of their products.

I like them as a company but this is annoying.  If I was a wargamer on a forum, I would much rather ask if there is an Army Builder out there than a Roster Something something.

Army builder comes to mind when you want to ...Build an army.  I don't necessarily want to build a roster.  I put things ftrom my army on a roster.

How even can army builder be used negatively.  I used to wargame but some army builder caused me to lose my job?


----------



## jaerdaph

okays now that lone wolf has imploded and their company is no longer around  (sorry to see go after all these year) where else can I find some good army-building software? I have som e armies that needs building and I need army-building software pls ppl who are the big players now in army-building software?


----------



## Dire Bare

Army Builder said:


> Would you all people please just leave me alone, thanks?




Well, I'm glad we're not resorting to childish behavior in this discussion.


----------



## Tewligan

lonewolfdevel said:


> As for all of the posts that misused our trademark, well, we can't change history. It occurred. So no changes to the individual posts were required.



That doesn't seem to be what you were saying here:


> 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.


----------



## pedr

I think this is fascinating, though that's probably because I'm a law lecturer. I don't do IP at all, though, so have no particular insight.

What strikes me as the most likely legal position, though, is this:

Lone Wolf (probably) have a clear case against various people who have created "My New Army Builder" tools. If they want to send letters, or set lawyers on, people who have infringed their trademark in this way, that's entirely proper.

What I don't quite understand is where Privateer Press has done anything wrong at all, or why Lone Wolf thought they could require PP to do anything in response. Even if the creator of "My New Army Builder" wrote a post saying "Buy my new Army Builder here:" the infringer is the creator of the program, not the operator of the forum. Surely it is the responsibility of the infringer to come into compliance. Perhaps the forum has a duty to co-operate with Lone Wolf's attempts to enforce its mark, by deleting specified posts which advertise infringing products. Perhaps the owner of an advertising board would have a duty, if informed by a trade-mark owner, to remove a poster advertising an infringing work. But while Lone Wolf are arguing that people have conflated their first, strong demand and their second request for assistance in educating people that 'army builder' is not a generic term, I think they overlook the strong possibility that the first claim is just as (if not more) flawed, as it seems to indicate that PP themselves are infringing on Lone Wolf's trademark by 'permitting' the advertising of an infringing product, and I find that unlikely.


----------



## El Mahdi

deleted


----------



## S'mon

Good faith descriptive use of TM'd words is non-infringing, ie using "army builder" to describe a characteristic of software is non-infringing, at least in UK/EU law, and AFAIK US is the same.


----------



## Dragonhelm

JohnRTroy said:


> You might have a point about apologizing to Privateer, but they don't need to apologize for getting the Trademark itself.




Right, an apology to Privateer would be good, and maybe one to the fan community for inadvertently causing a ruckus.  I don't think Lone Wolf should apologize for gaining the trademark or for defending it.  



> Plus, they've likely invested time and money  get this trademark.  They should give it up for the sake of a few people going off the wall, whose potential "boycott" might only end up being a couple dozen people?




I'm not saying they should give it up.  Make it a part of a new trademark, ergo the tagline I suggest.  Yes, it would require more time and money, but it may be more beneficial in the long run.

*shrugs*


----------



## Steerpike7

One important thing Lone Wolf could do with respect to their ARMY BUILDER mark is to actually use the circle-R trademark registration symbol in conjunction with it.  If you look at the front page of the site, the circle-R does not appear next to the Army Builder logo, or after the name Army Builder in the menu near the top of the screen, or in the references to Army Builder in the text of their web site.  They do have a statement at the bottom of the web page.

Marking isn't mandatory, but it does let people know you are serious about your trademarks and can provide some additional protections.


----------



## pawsplay

Dire Bare said:


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




Ways too numerous to list. But a few, off the cuff:
1. It is not merely descriptive. It's not sufficient descriptive, even. It's a handbook... for players. Most games refers to these things as rulebooks, player's guides, player books, character rules, etc. The only reason it would likely be used for a book for another game is _because it had been genericized_. Apart from Boy Scouts and HR departments, who even says "handbook" in conversation on a daily basis?
2. At the time it came out, it was a specific kind of book for a game which represented essentially the entirely of the industry. "Player's Handbook for D&D" is sufficiently distinct from "The Rules for Advanced Squad Leader." 
3. It's not a phrase likely to arise from everyday conversion, as I said above. Asking someone not to use "handbook" in connection with player doesn't really stop anyone from saying something they wanted to say using ordinary terms. 
4. Player's Handbook, from the Trademark Office's standpoint, may not be sufficiently intelligable as describing a kind of book common to all RPGs. In fact, many RPGs are one book games anyway, or folios.

etc.

And all that said... Player's Handbook is not that great a trademark. I would have gone with "Dungeons & Dragons Player's Handbook," and if someone tried to tm "Dragons & Dungeons Player's Handook," I would sue _them_, and block any registrations of just "Player's Handbook" as being generic.



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




So? It is alike them in being a legit, registered trademark, and like many of them in that it shouldn't be.



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




Well, that was rude.


----------



## JohnRTroy

pawsplay said:


> So? It is alike them in being a legit, registered trademark, and like many of them in that it shouldn't be.




Law and legal precedent, going back almost a century, disagree with you.  Descriptive Marks were and are very common.  Between the USPTO lawyers who review and the peer process once it goes into the marketplace, there are enough checks and balances.


----------



## Turtlejay

Am I the only one, when struck by the generic nature of 'Player's Handbook' that thought it would make a great trap?

Like, a book on the cover that talked about how to get lots of women, but inside was filled with video game cheat codes?

Or a movie with Bill Bellamy writing a book on How to be a Player, and it was called 'Player's Handbook', only they manage to sneak some D&D scene in there. . .

Of course, this is the internet.  I'm sure there's something on youtube already...

Jay


----------



## Xyxox

So all this talk about a product I've been meaning to buy, plus some issues the company that produces that product had a while back (as I discovered on another forum) has lead me to search out a different roster creation tool.

I found The Forge. I think I'll give ti a whirl while things sort out with Army Builder®.


----------



## S'mon

JohnRTroy said:


> Law and legal precedent, going back almost a century, disagree with you.  Descriptive Marks were and are very common.  Between the USPTO lawyers who review and the peer process once it goes into the marketplace, there are enough checks and balances.




Checks and balances?  Maybe in your bizarro world.


----------



## S'mon

A search for Player's Handbook on amazon brings up the following at #4:

[ame=http://www.amazon.co.uk/Players-Handbook-Pickup-Seduction-Secrets/dp/0979860555/ref=sr_1_4?ie=UTF8&s=books&qid=1265313947&sr=8-4]Player's Handbook Volume 1 - Pickup and Seduction Secrets For Men Who Love Women & Sex and Want More of Both: Amazon.co.uk: Tommy Orlando: Books[/ame]

...and #5 was too rude to link to.


----------



## falcarrion

Mar 19, 2009 ... iBodger is a free WARMACHINE and HORDES army building app for the iPhone and iPod touch. Designed by Wendell Hicken, Ibodger contains the ...

I'm surprised no one took the time to look this up.
No wonder why Lone Wolf did what they did.
They had a right to protect there trade mark.
This app was dicussed quite often on the Pirateer website by the creator and the fans on the site.

At least Lone Wolf took the time to come here and discuss their reasons for what they did.
Makes me wonder why Pirateer Press hasn't.


----------



## Doc_Klueless

JohnRTroy said:


> Doc_Klueless said:
> 
> 
> 
> 
> Gamers never forget and seldom forgive. Bad step for Lone Wolf.
> 
> 
> 
> 
> Only if we're have eidetic memories and are all sociopaths or psychopaths.  We're not.
Click to expand...


 I'm basing that on the Are People Still Mad? thread. It appears that gamers have a very long memory... or better yet: internet cruising gamers have very long memories and appear to hold grudges for quite a while.


			
				JohnRTroy said:
			
		

> To myself, this is a tempest in a teapot.



No doubt. Where it'll have an impact is if threads like this pop up in search engines when someone who's interested in Lone Wolf type products does a search. It's the little things that have grand impact for some reason. 


> ETA:  Ah, I see we are now resorting to 4chan style postings now...jeez...



I have no idea what this means.


----------



## ShinHakkaider

falcarrion said:


> Mar 19, 2009 ... iBodger is a free WARMACHINE and HORDES army building app for the iPhone and iPod touch. Designed by Wendell Hicken, Ibodger contains the ...
> 
> I'm surprised no one took the time to look this up.
> No wonder why Lone Wolf did what they did.
> They had a right to protect there trade mark.
> This app was dicussed quite often on the Pirateer website by the creator and the fans on the site.
> 
> At least Lone Wolf took the time to come here and discuss their reasons for what they did.
> Makes me wonder why Pirateer Press hasn't.




I dont understand what the issue is. 
Privateer had their own app, NOT CALLED Army Builder. At no point did LW mention that was the reason for going after Privateer Press.


----------



## Perram

falcarrion said:


> Mar 19, 2009 ... iBodger is a free WARMACHINE and HORDES army building app for the iPhone and iPod touch. Designed by Wendell Hicken, Ibodger contains the ...
> 
> I'm surprised no one took the time to look this up.
> No wonder why Lone Wolf did what they did.
> They had a right to protect there trade mark.
> This app was dicussed quite often on the Pirateer website by the creator and the fans on the site.
> 
> At least Lone Wolf took the time to come here and discuss their reasons for what they did.
> Makes me wonder why Pirateer Press hasn't.




Army building is not the same as Army Builder, my understanding is that trade marks are very specific exact phrases, not any variation of common words.


----------



## falcarrion

the description has been changed to army listing app.
Why was this done? To avoid legal problems?
As this was discussed on thier website it's not hard for people to ask questions like:
Does your army builder import pics?
ETC...


----------



## Iron Sky

Piratecat said:


> You get major credit for coming in to talk. Thanks for that.




This.

Especially since you are coming seeking to answer questions, are open to feedback, and aren't getting reactive - which I could imagine takes some effort considering you're trying to defend a company and product you've been investing time and energy in for over a decade.

I personally have no idea what the so called "right thing" to do was in the first place, but I, for one, am impressed with your willingness to step into the internet forum "line of fire".

The only advice I might have to offer has nothing to do with legaleese or PRambulations: don't expect to "win" a forum debate.  Some people have already made up their minds, others will just drop in, skim a bit, then post their first reaction, and some people find it entertaining just to "stir things up".

Anyway, long story short, props.


----------



## Ghostwind

Lone Wolf has a right to defend their trademark as far as other army construction programs go, however, here is another case of sending a letter to censor the use of "Army Builder" in a forum. It is not just restricted to Privateer Press.

GameStLouis.com • View topic - Trademark Notification Announcement


----------



## ArcaneSpringboard

JohnRTroy said:


> Actually, they've been doing that to other people, as this thread shows.
> 
> Army Builder is a trademarked phrase - Heroscapers
> 
> It looks like they got the same letter, maybe without the 72 hour notice, and the guy complied, and he actually felt the company was "very cool" about it.





That letter looks very similar to the one PP got.  In fact, most of the PP letter probably is _exactly_ what is in that letter.  There do seem to be some important differences that probably have been what triggered the controversy.

1.  There is no mention of the DCMA in the Heroscapers letter.  The DCMA is a legal hammer that shouldn't be used lightly (although it often is).

2.  As you say, there is no 72 hour notice...so no time pressure.

3.  There is no mention of referring the matter to lawyers, so this is doesn't come across as a threatening letter.

4.  Apparently, there are specific spots on the website where the trademark infraction occured.  This is a bit different than policing forums.  

As an addendum to that last point, wolflairdev mentioned that they were perfectly willing to do the 'educating'.  That is not clear to me in the letter that they sent PP.  All it would have taken would be a sentence saying exactly that.


----------



## Xyxox

Ghostwind said:


> Lone Wolf has a right to defend their trademark as far as other army construction programs go, however, here is another case of sending a letter to censor the use of "Army Builder" in a forum. It is not just restricted to Privateer Press.
> 
> GameStLouis.com • View topic - Trademark Notification Announcement




Looks like they're making the rounds of game forums. And, they've made my decision for me. No Army Builder or Hero Lab software for me. This is beyond the pale. They've gone all Lorraine Williams on the internet!


----------



## TheYeti1775

lonewolfdevel said:


> Greetings,
> 
> I just noticed this thread here on ENWorld, so I figured I better make myself available to answer questions and, in a few cases, clarify matters that seem to be misunderstood.



Thanks for coming over Rob.



lonewolfdevel said:


> 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.




As a good bit of this board started gaming in the 70's, yeah Army Building was in full effect before the Internet.  Also the armies of the world were using the term Army Builder in various reports before our Grandfathers were born.  
It is also especially prevalent in many board war games.

If I remember right there were plenty of old BBS around that discussed it as well.  So the term to me if very very generic.

But on the other foot, I would wager most of it was 'Army Building' vice 'Army Builder'.  While you got the Trademark free and clear, defending realistically isn't a task you should take on.  Unless of course you have money pouring out your buttocks more than a poo flinging monkey.


But since we are on the Trademark issues, did your company purchase the rights to Lone Wolf?

Your venture started in 1993 to quote your website. 
Background - More - Lone Wolf Development
But the Lone Wolf game books, novels (choose your own adventures) and various computer software were since the 80's.  
http://en.wikipedia.org/wiki/Lone_Wolf_(gamebooks)
All of which I believe is owned by Mongoose Publishing currently.
Sounds like they could send you a C&D just on your company name.
As your a gaming company, profiting on another gaming company's stuff.

Now don't that throw a wrench into the monkey works.

Course it's generic use is already out there.
Army-building - Transformers Wiki


> Army-building is a nickname for a toy-collecting habit that involves buying multiple identical toys which represent generic or mass-produced characters (for example, Cobra soldiers or Star Wars Stormtroopers), with the intent of displaying them as an imposingly large cohesive unit. Some army-builders have hundreds of figures, arranged in elaborate dioramas or military-style formations.



But of course that has a '-' in it.
So Jim will just have to rename to Jim's Army-Builder, and there would be poo to be done.


----------



## Steerpike7

The fact that ARMY BUILDING or ARMY BUILDER or something similar might already have been out there for collecting toy figures doesn't necessarily mean anything here. Trademarks are tied to specific goods and/or services.  Someone can have a mark with respect to one set of goods and services, and a completely different company can have the identical mark for different goods and services.  If Lone Wolf's mark is registered for computer software that provides X and Y functionality, the fact that the term was already out there with respect to toy figure collecting doesn't necessarily matter.


----------



## hewligan

My opinion - 

People seem generally angry over trademark law, and are perhaps projecting that anger onto the specifics of this particular case,.

It has taken incredible guts (and clearly a rather large reserve of personal calm) for LoneWolfDevel to come over here to ENWorld and try to constructively and openly respond to some of the points raised. His responses have always been polite, even though some of the posts against him appear, to me, rather vitriolic.

Is he right? Possibly not, if you get into the minutiae of the legal aspects.
Is it a HUGE deal? No.
Has he been as open as he can be in trying to explain his position? Yes.
Will the Interweb ever forgive this heinous crime against freedom? Give it a week - all will be forgotten when WoTC decide to kill some IP or shut down some fan-site, or perhaps fire a beloved member of staff.

So, for me, I may not agree with you, LoneWolfDevel, but I do salute your guts for coming here and being so open in the face of "Geek Anger".


----------



## Xyxox

hewligan said:


> My opinion -
> 
> People seem generally angry over trademark law, and are perhaps projecting that anger onto the specifics of this particular case,.
> 
> It has taken incredible guts (and clearly a rather large reserve of personal calm) for LoneWolfDevel to come over here to ENWorld and try to constructively and openly respond to some of the points raised. His responses have always been polite, even though some of the posts against him appear, to me, rather vitriolic.
> 
> Is he right? Possibly not, if you get into the minutiae of the legal aspects.
> Is it a HUGE deal? No.
> Has he been as open as he can be in trying to explain his position? Yes.
> Will the Interweb ever forgive this heinous crime against freedom? Give it a week - all will be forgotten when WoTC decide to kill some IP or shut down some fan-site, or perhaps fire a beloved member of staff.
> 
> So, for me, I may not agree with you, LoneWolfDevel, but I do salute your guts for coming here and being so open in the face of "Geek Anger".




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.


----------



## denzoner

Dire Bare said:


> 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 . . . .




WotC/TSR got away with it, they got lucky. Lone Wolf Development isn't, as you all can see... or they're trying. 

My question is HOW IN THE HELL did Lone Wolf get away with such a un-original and confusing name. Isn't ironic how many times Lone Wolf has gotten confused with White Wolf? I'm still blown away with the fact that Lone Wolf isn't the same as the Lone Wolf Gamebooks and Roleplaying Game! 

Bad company name, bad product name, bad "guy trying to defend Lone Wolf Dev." - they should have kept their mouths shut.


----------



## 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

JohnRTroy said:


> 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

roguerouge said:


> 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

JohnRTroy said:


> 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

Mathew_Freeman said:


> 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.


----------



## 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

rjdafoe said:


> 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

Xyxox said:


> 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

lonewolfdevel said:


> 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

lonewolfdevel said:


> 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

pawsplay said:


> 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

lonewolfdevel said:


> 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.



lonewolfdevel said:


> 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

lonewolfdevel said:


> 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

Terramotus said:


> 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".



Terramotus said:


> 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. 



Terramotus said:


> 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.



Terramotus said:


> 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

JohnRTroy said:


> 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?


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## Xyxox

pawsplay said:


> 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?




I'm going to still refer to my spreadsheets, which evolved from spreadsheets on spreadsheet software no longer available and began in the eighties, as "Army Builder Spreadsheets".

Know what? There's not thing one Lone Wolf can do about it. There's not thing one they cna do about my post, either. I don't sell my army builder spreadsheets, so I cna call my army builder spreadsheets what I've called them for decades now.

And yes, the very first Army Builder Spreadsheet I ever created was in Multiplan on a PC and was for building armies for use with the first edition of Battlesystem. It later evolved to Visicalc and Lotus 123, and expanded to second edition Battlesystem.

And if I really dig in some boxes I have in my basement, I wouldn't be surprised if I could dig up a 5 1/4" diskette with files named "Amry Builder".


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## Garthanos

Xyxox said:


> I'm going to still refer to my spreadsheets, which evolved from spreadsheets on spreadsheet software no longer available and began in the eighties, as "Army Builder Spreadsheets".
> 
> Know what? There's not thing one Lone Wolf can do about it. There's not thing one they cna do about my post, either. I don't sell my army builder spreadsheets, so I cna call my army builder spreadsheets what I've called them for decades now.
> 
> And yes, the very first Army Builder Spreadsheet I ever created was in Multiplan on a PC and was for building armies for use with the first edition of Battlesystem. It later evolved to Visicalc and Lotus 123, and expanded to second edition Battlesystem.
> 
> And if I really dig in some boxes I have in my basement, I wouldn't be surprised if I could dig up a 5 1/4" diskette with files named "Amry Builder".




Please can we call the company something other than Lone Wolf (LWD?)... Joe Dever these people are not nor are they Mongoose Publishing...  it makes me anti-empathetic towards them more-so than I might otherwise be especially since one of them has been fairly forthright about posting here.

Speaking of which this got me looking up what was happening with the real Lone Wolf Game company.
http://www.mongoosepublishing.com/rpg/series.php?qsSeries=24#


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## Lanefan

A question arises...

Say for some unknown reason I decide to trademark the name "John R. Troy Donkey Bong", with full and free permission from a (in this case hypothetical) John R. Troy I happen to know.

Do all the other John R. Troys in the world have to give me their permission as well?  And what if one of them doesn't?

Worse yet, what if it's my own name I'm using?  Can someone else with the same name deny me the right to use it as I wish just because they disapprove of such use?

Lanefan


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## Xyxox

Garthanos said:


> Please can we call the company something other than Lone Wolf (LWD?)... Joe Dever these people are not nor are they Mongoose Publishing...  it makes me anti-empathetic towards them more-so than I might otherwise be especially since one of them has been fairly forthright about posting here.
> 
> Speaking of which this got me looking up what was happening with the real Lone Wolf Game company.
> Mongoose Publishing : For All Your Gaming Needs ...




That's one of two wild cards I see in this whole episode.

1) What will Mongoose do regarding their Lone Wolf IP since LWD brought this all to the forefront?

2) What will Privateer Press, GW, etc. do about the dataset files for LWD's Army Builder? Are there licensing agreements in place for those already? If so, why does LWD depend upon voilunteers to maintain those datasets?


----------



## Dire Bare

pawsplay said:


> 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?




Just because YOU and a handful of others here think "Army Builder" is a stupid name for this product and somehow "douchey" to trademark it . . . doesn't make it so.

John has proved multiple times in this thread that he knows what he is talking about . . . it's getting sad to hear the repeated cries of foulplay over the naming of the software and the trademarking of that name.

LoneWolfDevel made the mistake of sending a letter he should have let his attorney send and used some incorrect terminology.  He FUBARed the situation and created a mini-internet firestorm when it could have been handled much more elegantly . . . . but he and his company hasn't really done anything morally or legally wrong.


----------



## Dire Bare

Xyxox said:


> That's one of two wild cards I see in this whole episode.
> 
> 1) What will Mongoose do regarding their Lone Wolf IP since LWD brought this all to the forefront?
> 
> 2) What will Privateer Press, GW, etc. do about the dataset files for LWD's Army Builder? Are there licensing agreements in place for those already? If so, why does LWD depend upon voilunteers to maintain those datasets?




Not really.

Lone Wolf Development, a software gaming company, has chosen a fine name that doesn't step on any trademarks.  It is obviously very similar to the Lone Wolf series of game books, but as the two are in different categories with no overlap so there is no problem.  Somehow claiming that LWD is again, being underhanded, this time in choosing their company name, is more overreaching by those who wish to remain offended.

The linking to data files for a variety of game systems and their respective copyrights and trademarks could be troubling for LWD.  They've been doing it for years, as have many of their competitors.  But that, of course, doesn't make it right or safe.  I doubt that Privateer or any of the other companies really object to the practice, however, as they've been aware of it for years and have taken no steps to stop it.  It actually adds value to their games, so why bother hassling over it?


----------



## Dire Bare

I suppose I'll also add in response to posts a few pages back asking, "Lone Wolf Development who?  I've never heard of these guys!"

For those who feel that way . . . do you play miniature wargames?  LIke Warhammer or Privateer's games like Warmachine and Hordes?  I've been playing since the 90s, and LWDs Army Builder has been a favorite piece of software for almost everyone I've met in the hobby.  Many find it essential.  They don't have many competitors, and no one's managed to oust them from their #1 spot.  All my local gamestores have had copies on CD available for sale for as long as I can remember.  That's all anecdotal, of course, but if you're a wargamer then you are probably familiar with Army Builder.

The name of the software is in danger of becoming generic for the same reason Coke has become a generic word for softdrink in some parts of the country.  Because it's the most popular!

Also, I've seen plenty of discussion on these boards regarding LWDs Hero Lab RPG software.  I've personally only played with the demo, but it seems to be favorably received here on ENWorld.

I'm not sure how popular their Card Vault software for CCGs is, but I use it and think it's pretty slick.


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## Relique du Madde

Dire Bare said:


> so why bother hassling over it?




Let see... does this scenario work for you?

LWD > Stop using the phrase "Army Builder" on your site.
IP Holder > You do realize that you are using my IP (without a license?) for Army Builder.
LWD > I don't care, stop saying Army Builder!
IP Holder > No.. YOU stop using my IP.
LWD > No..  YOU stop saying Army Builder!
IP HOlder > /facepalm


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## S'mon

lonewolfdevel said:


> 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.




To quote 300, "THIS IS MADNESS!"

You or your lawyer are taking a judge's comment re the offering of goods on Ebay and applying it to Bulletin Board discussion.  If there are fake products on sale on Ebay, a clear-cut case of infringement by the offerors, it's not a big stretch to say that Ebay has a responsibility to remove those ads upon notice, or become contributorily liable.  Discussing army builder software on a board cannot be TM infringement to begin with, so no hoster liability can arise.

Thanks for this though, I'm starting to see how this mess has arisen.


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## Oldtimer

S'mon said:


> To quote 300, "THIS IS MADNESS!"



Madness...?
THIS IS INTERNET!

_Sorry, I just had to..._


----------



## evilref

lonewolfdevel said:


> 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.





I'm surprised at you referencing the Tiffany case as, well, it rather runs counter to your argument. 

1) The Digital Millenium Copyright Act is not mentioned anywhere in Judge Sullivan's summation. The quote you use also does not appear anywhere within the Judge's findings. I don't know where you got it from, but it runs contrary to the findings of the Judge. I suggest you read the Judge's comments as they're a very clear walkthrough of trademark law as it pertains to the tiffany versus ebay case.

2) The Tiffany versus Ebay case is a very different situation. In the one it's exactly the sort of thing Trademarking is there to protect against. Counterfeit goods being sold under the Tiffany mark. That's a clear trademark violation. As opposed to your situation which has general descriptive use of a mark, and/or non-commercial use. Like Tiffany you targeted the venue this takes place in rather than the trademark violaters themselves. But unlike ebay, PP are and were not supplying these goods. As such there's no direct application, therefore no inwood test and, under current law, nothing you can directly charge them with (you could certainly try, but your case would be far weaker than Tiffany's). 

2) The Tiffany case revolved around fraud and counterfeit goods being sold under its mark, with Tiffany alleging that the steps taken to prevent this by Ebay were inadequate. I'm sure you're not suggesting that anyone was commiting fraud in your case? 

3) Lastly, Tiffany lost. What's more the Judge's summation includes something of relevance to your case:


_Nevertheless, the law is clear: it is the trademark owner's burden to police its mark, and companies like eBay cannot be held liable for trademark infringement based solely on their generalized knowledge that trademark infringement might be occurring on their websites._

Edit: Just to clarify this, that doesn't then extend that PP would be liable even if they knew of specific incidents. You'd need to prove they were liable for contributory trademark infringement. This would probably fail, according to my reading of the precedents, given the nature of PP as opposed to those companies who have been found guilty of contributory trademark infringement.

I think you might need to go back to the lawyer again as it would appear there's still some confusion somewhere at your end.



pawsplay said:


> 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?




I like Army Planner which I've read elsewhere. We also have Army planning software, army building software, army plans, Build-a-army etc etc.


----------



## Kafen

Speaking directly to the context of the original request to the other Forum, I have a hard time making sense of the transition from forum post to product in terms of trademark case law. 

Just wondering...


----------



## rjdafoe

lonewolfdevel said:


> 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.




Fair enough. What I interpreted was that you were attributing your product to having created the term.

I do have to say though, the words army building was way more widespread than army builder. I just can't imagine that this was an accident as amy builder is a logical conclusion of army building, or building an army or any other related terms.

Good luck at any rate, for I think you will have an uphill battle for that name. In todays world, I think less of these generic names would happen with the internet so common. But way back when there was less communication. Especially if it was thought out of what you could force people to do in the future becuase you "owned" a description of a generic product. (EDIT: That is not to say this is what you  are doing - these things seem to be all too common these days)


----------



## JohnRTroy

Lanefan said:


> A question arises...
> 
> Say for some unknown reason I decide to trademark the name "John R. Troy Donkey Bong", with full and free permission from a (in this case hypothetical) John R. Troy I happen to know.
> 
> Do all the other John R. Troys in the world have to give me their permission as well?  And what if one of them doesn't?
> 
> Worse yet, what if it's my own name I'm using?  Can someone else with the same name deny me the right to use it as I wish just because they disapprove of such use?




Names are tricky.  

The primary concern of names is _consumer confusion_.  If there are other John R. Troy's in the world, the use of JRTDB (edited for ease) as a trademark is probably not going to be opposed.  (For instance, there is a JohnTroy.com devoted to some signer who is not me.  I'm not famous at all.  (The only reason I even use my "R" is because my Dad had the same name and it gets confusing if you omit that going to banks and doctors.)

But there's a fame factor involved.  Anybody trying to create a trademark with the name "Paul Newman", even if it was created by a Paul Newman, might have trouble if the estate of actor Paul Newman, who also has businesses like Newman's Own, objected.  Use of the word Trump or Disney would probably at least be challenged, as both single names have become synonymous with the companies and the people involved.

It would depend on the field involved.  Disney is famous for multiple endeavors, and the first thing most people across the world would think of them first when they see anything is the guys who made Mickey Mouse.  

However, some people have narrower realms of fame.  Gygax, for instance, is a common Swiss name.  There are companies called Gygax, so Gary's estate can't complain about a Gygax watches.  (EGG did have a gygax.com at one point, then lost it to those guys after retiring a web site). 

However, if somebody in the US named Gygax tried to create a trademark called "Gygax Creations" that developed computer or tabletop RPGs, and it wasn't clear that it was by some other Gygax, Gail and Co. could complain.  If the guy used his full name "Frank Otis Gygax" in the Trademark, then he'd had more protection.

The key is potential consumer confusion.


----------



## JohnRTroy

For those looking for more information (and who feel like reading a lot of stuff) about Trademark Law (at least how it's applied in the US, including a lot of references to court cases and specific examples), I highly recommend this link.

US TMEP 2009 Chapter 1200


----------



## S'mon

JohnRTroy said:


> But there's a fame factor involved.  Anybody trying to create a trademark with the name "Paul Newman", even if it was created by a Paul Newman, might have trouble if the estate of actor Paul Newman, who also has businesses like Newman's Own, objected.




Are you a lawyer?  As someone whose surname is Newman and who teaches TM law, I assure you that TM law entitles me to good faith use of my own name, should I choose to launch a range of vegetable condiments.  Of course that might not stop someone 'objecting', but the law is clear.

Edit:  You're entitled to your opinion of course, but you've been making a lot of assertive-sounding statements on this thread that seem unduly erroneous even for the Internet.


----------



## S'mon

evilref said:


> I'm surprised at you referencing the Tiffany case as, well, it rather runs counter to your argument.
> 
> 1) The Digital Millenium Copyright Act is not mentioned anywhere in Judge Sullivan's summation. The quote you use also does not appear anywhere within the Judge's findings. I don't know where you got it from, but it runs contrary to the findings of the Judge.




I'm very glad to hear that as it didn't seem like something a sensible judge would say even _obiter_, being wide open to misinterpretation.


----------



## JohnRTroy

S'mon said:


> Are you a lawyer?  As someone whose surname is Newman and who teaches TM law, I assure you that TM law entitles me to good faith use of my own name, should I choose to launch a range of vegetable condiments.  Of course that might not stop someone 'objecting', but the law is clear.
> 
> Edit:  You're entitled to your opinion of course, but you've been making a lot of assertive-sounding statements on this thread that seem unduly erroneous even for the Internet.




Well, I am trying to be informed.  I spent last night reading the entire link I showed above.

You can use your own name, but there can be objections based on other factors.

First, in the US, you can't register a trademark that is solely based on a surname.  There's a whole set of rules on that.  So, your Trademark can't be simply "Newman".  If you weren't careful, having a salad dressing might imply False Suggestion of a Connection.  They might also object due to the Fame Factor, or the Fame of the Mark.  

Of course, I have no idea what the rules are in the UK and/or if Newman's stuff is as popular there as it is here.  I can bet the names Trump and Disney might be much more protected due to their use in commerce.  And keep in mind I'm talking about Federal Registered Trademark, and not necessarily common-law interpretations.

As you teach TM Law in the UK, I'd be happy to see any links or any quotes from the sources that you find from your interpretation.  After all, one of the things we're all her to do is learn more information.  I'm always willing to learn the facts.


----------



## pawsplay

Dire Bare said:


> Just because YOU and a handful of others here think "Army Builder" is a stupid name for this product and somehow "douchey" to trademark it . . . doesn't make it so.




And conversely, the chorus claiming otherwise doesn't make it okay. I'm not asking for a show of hands. I'm saying, "This is not a good thing to do."



> John has proved multiple times in this thread that he knows what he is talking about . . . it's getting sad to hear the repeated cries of foulplay over the naming of the software and the trademarking of that name.




That's not my impression. At all. So far, he's proved that several lawyers felt the need to correct him on some points, and he's argued at length with me on a position I don't hold.



> LoneWolfDevel made the mistake of sending a letter he should have let his attorney send and used some incorrect terminology.  He FUBARed the situation and created a mini-internet firestorm when it could have been handled much more elegantly . . . . but he and his company hasn't really done anything morally or legally wrong.




Other than trademarking a generic term, threatening people with legal action over descriptive uses of the term, and involving uninvolved third parties in trying to prop up their case through the legal action. Is trying to un-generic the generic unethical? I'm going to say, yes, yes it is. 

When people try to get IP rights to the dirt we walk on and the air we breathe, it makes me angry. In this case, it's a small player, but I don't hold a different opinion just because the people affected is a small group of people.

"Illegal" is a red herring. Apart from counterfeiting and certain willful acts, there are not a lot of crimes involved in trademark law.


----------



## S'mon

JohnRTroy said:


> As you teach TM Law in the UK, I'd be happy to see any links or any quotes from the sources that you find from your interpretation.  After all, one of the things we're all her to do is learn more information.  I'm always willing to learn the facts.




The UK Law is in the Trade Marks Act 1994:

"S. 11 Limits on effect of registered trade mark...

(2) A registered trade mark is not infringed by—

(a) the use by a person of his own name or address"

Trade Marks Act 1994 (c. 26)


----------



## S'mon

JohnRTroy said:


> First, in the US, you can't register a trademark that is solely based on a surname.  There's a whole set of rules on that.  So, your Trademark can't be simply "Newman".  .




Actually, the link you provide US TMEP 2009 Chapter 1200 says the opposite - that surnames are registrable as marks *if they have acquired distinctiveness* (through use).

Edit:  You seem to be confusing questions of registrability with questions of infringement.  Whether I can register Newman for salad dressing is a different question than whether I can market Newman's Salad Dressing without being successfully sued for TM infringement.


----------



## JohnRTroy

Well, at least we're all learning I guess...

I find the USPTO search engine fun.

John Troy was once registered for natural sauces...been dead since 2002 though...

I also found out that Lone Wolf is not a registered Trademark for anything involving gaming.  If Mongoose still has it they haven't attempted federal registration.

TSR was granted "Dungeon Crawl" as a federal registered Trademark in 1996.  WoTC apparently let it die.  They also had World War I as a Trademark.

Paizo tried to get Adventure Path, but let it slide before finalizing it.


----------



## pawsplay

There is a Lone Wolf registered for video games and the instruction books thereof.


----------



## Twowolves

I can't believe I read the whole thing.....


After having done so, I am frankly appalled at some of the responses posted here. A small company is getting it's #1 product essentially ripped off, and when they try to defend their rights, they are called ..."_*doucebags*_"??? Really? It seems to me that Privateer had their own program that they were calling an "army builder", and THAT is why they got a letter. Could Lone Wolf have handled it better/more professionaly/more legally accurately? Sure, I guess. Could they have come up with a name that 12+ years down the road some internet-surfing dude they never heard of before might have liked better? Uhh.. sure? Not really the point. The point is, they are a tiny company trying to defend their breadwinning software so they can stay in business and keep food on the table. They aren't Medical Mechanica/MicroStuff/Massive Dynamic and they aren't trying to crush your right to free speech. 

Sheesh.


----------



## S'mon

JohnRTroy said:


> Paizo tried to get Adventure Path, but let it slide before finalizing it.




That would have made for a fun battle with WotC!


----------



## Dire Bare

pawsplay said:


> That's not my impression. At all. So far, he's proved that several lawyers felt the need to correct him on some points, and he's argued at length with me on a position I don't hold.




Sorry, I meant JohnRTroy, not LoneWolfDevel.  Is his name John too?


----------



## Skeld

JohnRTroy said:


> Paizo tried to get Adventure Path, but let it slide before finalizing it.




I seem to remember one of the Paizo guys saying that they intentionally decided not to trademark "adventure path" after starting the process.  They probably didn't want a thread similar to this popping up about them.  

As far as Lone Wolf / Privateer Press / Army Builder is concerned, I really don't care.  I downloaded LWD's HeroLab demo, but I haven't had a chance to use (beside, my group is playing Star Wars Saga right now and probably won't transition to Pathfinder for a few months).  If I like it, I'll buy it.  The issues surrounding the way they handled the PP letter have no affect on whether or not I use their software (unless this were to drive them out of business, which I seriously doubt).

After keeping up with this thread since it started, I think this is much ado about nothing.  There's a component of nerd rage in here, not to mention a fair amount of "stick it to the man," and chaos-feeding.  

The only real question I have is this: did LWD send PP this letter publically (like posting on PP's forum) or did they send it privately (through mail or post)?  That might make a difference to me.

-Skeld


----------



## Terramotus

Twowolves said:


> I can't believe I read the whole thing.....
> 
> 
> After having done so, I am frankly appalled at some of the responses posted here. A small company is getting it's #1 product essentially ripped off, and when they try to defend their rights, they are called ..."doucebags"??? Really? It seems to me that Privateer had their own program that they were calling an "army builder", and THAT is why they got a letter. Could Lone Wolf have handled it better/more professionaly/more legally accurately? Sure, I guess. Could they have come up with a name that 12+ years down the road some internet-surfing dude they never heard of before might have liked better? Uhh.. sure? Not really the point. The point is, they are a tiny company trying to defend their breadwinning software so they can stay in business and keep food on the table.  They aren't Medical Mechanica/MicroStuff/Massive Dynamic and they aren't trying to crush your right to free speech.
> 
> Sheesh.



Actually, the free speech issue was exactly the subject that was at issue for most of the thread.  The initial impression was that they were.  Now that it's been clarified, most of the arguing has tapered off.

Also, come on.  Worst case scenario is that they lose "Army Builder" as a trademark because it's become generic.  That's not having their product ripped off, that's losing some time spent on marketing.  So they might have to rename to "The Original Army Builder" and trademark that.

And the term IS generic, though whether it would be considered as such as a point of law I couldn't say.  People tend to abbreviate names but truncate descriptive terms.  I can't imagine a better, more easy to understand descriptor of what those programs do than the phrase "Army Builder".  Restricting the term partially restricts competitors from being able to effectively describe to their audience what their product does in a concise fashion.

Part of the problem is that they apparently hid under the radar until the trademark was uncontestable, and only now are attempting to educate people about it now that the mark can't be invalidated for being generic.

So while I'm no longer enraged by their actions, I won't cry any tears for them if they ultimately lose the trademark.


----------



## pawsplay

Dire Bare said:


> Sorry, I meant JohnRTroy, not LoneWolfDevel.  Is his name John too?




What?


----------



## rjdafoe

Twowolves said:


> I can't believe I read the whole thing.....
> 
> 
> After having done so, I am frankly appalled at some of the responses posted here. A small company is getting it's #1 product essentially ripped off, and when they try to defend their rights, they are called ..."_*doucebags*_"??? Really? It seems to me that Privateer had their own program that they were calling an "army builder", and THAT is why they got a letter. Could Lone Wolf have handled it better/more professionaly/more legally accurately? Sure, I guess. Could they have come up with a name that 12+ years down the road some internet-surfing dude they never heard of before might have liked better? Uhh.. sure? Not really the point. The point is, they are a tiny company trying to defend their breadwinning software so they can stay in business and keep food on the table. They aren't Medical Mechanica/MicroStuff/Massive Dynamic and they aren't trying to crush your right to free speech.
> 
> Sheesh.




I suggest that you go back and re-read it then, as I think you misunderstood what this was all about.


----------



## aboyd

pawsplay said:


> What?



Dire Bear defended JohnRTroy as "knowing his stuff" to which you replied that LoneWolfDevel has been corrected repeatedly.  However, since you're talking about a different guy, it's kinda not related.  Does that make sense?

He's taking the same position a bunch of people have -- that the trademark itself probably IS valid, but that the handling of this whole thing with PP could have been done better.  For what it's worth, that's a position I agree with.  Anyone can search Google Groups -- Usenet forums from the pre-Web Internet days.  And that goes all the way back to 1981.  And guess what?  The phrase "Army Builder" doesn't appear ONCE before about 1997.  "Building armies" and "building my army" appear repeatedly, but that's not quite the same.

So in my opinion, the trademark is pretty good.

(But I stand by my agreement with others that sending a letter with a deadline, legal threats, and then utterly incorrect demands is douchebaggy.  I like that LoneWolfDevel came back to the thread and corrected himself.  But there was a genuine mistake made -- one that has cost other companies huge amounts in fines.  So I think it's valid to flag that as a problem and react to it, even if other posters think the word douchebag is objectionable.  And at this point I'm really not talking to you, pawsplay, but rather addressing the whole crowd.)


----------



## lonewolfdevel

Just to make it official, a public explanation and apology for what went wrong with my message to Privateer can now be found on our website. The link is below for anyone here that's interested in reading it.

Explanation and Apology Regarding Message to Privateer Press - Lone Wolf Development Forums


----------



## lonewolfdevel

Morrus said:


> 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.




I asked our IP attorney about this today. According to him, the ruling I referenced established legal precedent that forum owners are essentially liable for trademark infringement in the same manner as covered by the DMCA. This apparently occurred through the ruling establishing a similarity relationship between the DMCA and trademark rights. Even though eBay won the case, the reason they did was because, when notified about the counterfeit goods, they took action to remove those listings. Apparently, this ruling had major implications.

Please don't ask me for more details on this. I'm _*NOT*_ a lawyer and I only have limited information that I obtained from our IP attorney. I have paraphrased him here, and the above is my interpretation of what I was told.


----------



## lonewolfdevel

S'mon said:


> You or your lawyer are taking a judge's comment re the offering of goods on Ebay and applying it to Bulletin Board discussion.




Apparently, this judge's ruling established important precedent, since it was at a high enough level to have such implications and was handed down by a judge whose court and rulings are apparently recognized as authoritative. That's the gist of what our IP attorney explained. He's been doing IP law for decades, and we pay him handsomely for knowing this stuff, so I have to believe that what he told me is reasonably accurate.

DISCLAIMER: I didn't write down what he said as a quote and I have paraphrased him here. The above is my interpretation of what I was told. Please check with your own sources for verification and to get specifics.



S'mon said:


> Discussing army builder software on a board cannot be TM infringement to begin with, so no hoster liability can arise.




Absolutely correct. The example that I responded to cited hosting a product/tool with the name "[insert poster]'s Army Builder". That would be a case of infringement. Simply using the term in a post is definitely _*not*_ infringement.


----------



## lonewolfdevel

evilref said:


> What's more the Judge's summation includes something of relevance to your case:
> 
> _Nevertheless, the law is clear: it is the trademark owner's burden to police its mark, and companies like eBay cannot be held liable for trademark infringement based solely on their generalized knowledge that trademark infringement might be occurring on their websites._
> 
> Edit: Just to clarify this, that doesn't then extend that PP would be liable even if they knew of specific incidents. You'd need to prove they were liable for contributory trademark infringement. This would probably fail, according to my reading of the precedents, given the nature of PP as opposed to those companies who have been found guilty of contributory trademark infringement.
> 
> I think you might need to go back to the lawyer again as it would appear there's still some confusion somewhere at your end.




Based on our IP attorney's explanation today, the ruling established that trademark rights are handled in analogous fashion to the DMCA. The site owner is not liable for any potential infringement until such time as they are notified. However, once the site owner is notified of an infringement, the site owner can potentially be held liable if they elect not to take action. If they do take action, they are not liable. The onus remains on the rights holder to police the IP. I believe this is entirely consistent with both the quote above and how the DMCA operates.

Again, I'm relaying the info that I received from our IP attorney, as I understood it. Please verify this info with your sources.


----------



## lonewolfdevel

rjdafoe said:


> In todays world, I think less of these generic names would happen with the internet so common. But way back when there was less communication. Especially if it was thought out of what you could force people to do in the future becuase you "owned" a description of a generic product. (EDIT: That is not to say this is what you  are doing - these things seem to be all too common these days)




The Army Builder product was first released 12 years ago, back before Al Gore "invented" the internet. Technology was vastly different back then.

I'm a software developer. I wrote what was essentially the original prototype for Army Builder as a tool for my own gaming group back in 1997. Local gamers saw it and wanted it, then they said I should turn it into a product. I did that as a side thing. It wasn't until years later that the product (and now two others with Hero Lab and Card Vault) became a full-time thing.

The name Army Builder is boring because I didn't spend the time to come up with something inventive for a side project. The product then took on a life of its own and steadily grew. The reason we didn't register the trademark until 2003 was because I didn't think the monetary investment was justified until 5 years down the line, when the product had become an industry standard. At that point, I needed to protect it.

There was definitely nothing nefarious about the name or trademark registration. 


The following is not directed at you, since you included appropriate disclaimers and *did* as the questions, but I encounter this issue regularly and feel compelled to bring it up....

It's incredibly frustrating when people instantly assume the worst and decry you for something that couldn't be farther from the truth. Is it really that difficult for people to ask questions and get the facts before rendering judgement?


----------



## lonewolfdevel

evilref said:


> The Digital Millenium Copyright Act is not mentioned anywhere in Judge Sullivan's summation. The quote you use also does not appear anywhere within the Judge's findings. I don't know where you got it from, but it runs contrary to the findings of the Judge. I suggest you read the Judge's comments as they're a very clear walkthrough of trademark law as it pertains to the tiffany versus ebay case.




Doh! I accidentally deleted this segment from my previous post on this issue, so I need to circle back on this. Sorry about that.

I only have the information I was given by our IP attorney. He stated that the judge's ruling established the relationship. He did not provide me with any specific quotes, and I didn't ask, since I didn't think I'd need them. I honestly don't know the basis on which the relationship was apparently established. 

What he told me was that, based on the ruling, the handling of trademarks is essentially analogous to the DMCA. It's quite possible that the various elements of the ruling establish comparable mechanics for trademarks that largely parallel those of the DMCA. If so, no explicit reference would be necessary, yet an analogous behavior would be established.

I will ask him about this specific issue and report back. Unfortunately, it's Friday night, so that likely won't be until Monday night. I'll send him an email, just in case he checks it over the weekend, but it's unlikely I'll hear back over the weekend. It definitely won't be tonight, since it's almost 3am in his timezone.


----------



## lonewolfdevel

Skeld said:


> The only real question I have is this: did LWD send PP this letter publically (like posting on PP's forum) or did they send it privately (through mail or post)?  That might make a difference to me.




The message was sent privately to the forum admins, and it was not a formal letter. Privateer then elected to publish that private message on their website.


----------



## lonewolfdevel

Terramotus said:


> Part of the problem is that they apparently hid under the radar until the trademark was uncontestable, and only now are attempting to educate people about it now that the mark can't be invalidated for being generic.




That couldn't be farther from the truth. The product has been out for TWELVE YEARS. We registered the trademark FIVE years after we first released the product instead of right away. And we've been policing the trademark now for 7 years. 

The product has been the de facto industry standard within the miniatures community for about 10 years now. So, with respect to those involved in the industry where the name matters, we've been about as publicly visible as could possibly be achieved. This is simply the first time that the fact we're policing the trademark has become front-page news.

The reason that we're now in need of educating the public about the trademark is that, within the last year, a few fan-created tools were released that used our trademark within the names. Those tools were primarily for Privateer Press' games, and, probably as a result of these infringing tools, the community on Privateeer's forum had begun using the term "army builder" in a general manner on a somewhat regular basis. This is the first time we've encountered more than a few random posts misusing our trademark that way. So this is the first time we've actually had to educate the community on the proper use of the trademark in a public manner. In the past, the problems have been limited to contacting the authors of tools. This time, we needed to address the open community.


----------



## S'mon

lonewolfdevel said:


> Just to make it official, a public explanation and apology for what went wrong with my message to Privateer can now be found on our website. The link is below for anyone here that's interested in reading it.
> 
> Explanation and Apology Regarding Message to Privateer Press - Lone Wolf Development Forums




Sounds like good stuff.


----------



## S'mon

lonewolfdevel said:


> I asked our IP attorney about this today. According to him, the ruling I referenced established legal precedent that forum owners are essentially liable for trademark infringement in the same manner as covered by the DMCA. This apparently occurred through the ruling establishing a similarity relationship between the DMCA and trademark rights. Even though eBay won the case, the reason they did was because, when notified about the counterfeit goods, they took action to remove those listings. Apparently, this ruling had major implications.




This is not the kind of thing I would say to a non-lawyer, because of the potential for confusion.  What you need to understand is that primary liability needs to arise before any possibility of vicarious/contributory/secondary liability can arise.  A bulletin board operator can't be liable for TM infringement through people engaged in normal discussion on its forae, because that discussion cannot give rise to primary liability.

Conversely, if people are offering fake Rolexes for sale on my commercial website (Ebay - note that Ebay makes money off the sales), and I have good reason to think they're fake, and I allow this to continue, then I can be held liable.  This arises from the normal operation of TM law, nothing to do with the DMCA though.  If there's a point re the DMCA it's that take-down upon notice should prevent liability, just as the DMCA protects OSPs from liability if they take-down upon notice.


----------



## S'mon

lonewolfdevel said:


> Absolutely correct. The example that I responded to cited hosting a product/tool with the name "[insert poster]'s Army Builder". That would be a case of infringement. Simply using the term in a post is definitely _*not*_ infringement.




I don't think so, but I'd have to know more.  TM Infringement requires commercial offering of goods or services under my reading of both Lanham and the UK TMA, writing free software and calling it "X's Army Builder" is not infringement.  This is why WoTC/Hasbro lawyers go after you if you put "D&D" on a product you charge money for (Ema's), but not if you're offering a free adventure etc.  With no commercial use you have to use copyright, which is a much trickier prospect.


----------



## S'mon

lonewolfdevel said:


> Doh! I accidentally deleted this segment from my previous post on this issue, so I need to circle back on this. Sorry about that.
> 
> I only have the information I was given by our IP attorney. He stated that the judge's ruling established the relationship. He did not provide me with any specific quotes, and I didn't ask, since I didn't think I'd need them. I honestly don't know the basis on which the relationship was apparently established.
> 
> What he told me was that, based on the ruling, the handling of trademarks is essentially analogous to the DMCA. It's quite possible that the various elements of the ruling establish comparable mechanics for trademarks that largely parallel those of the DMCA. If so, no explicit reference would be necessary, yet an analogous behavior would be established.
> 
> I will ask him about this specific issue and report back. Unfortunately, it's Friday night, so that likely won't be until Monday night. I'll send him an email, just in case he checks it over the weekend, but it's unlikely I'll hear back over the weekend. It definitely won't be tonight, since it's almost 3am in his timezone.




I think he may have told you something that was technically correct but potentially misleading - "a litle knowledge is a dangerous thing".  It's definitely not the case that you can refer to the DMCA when seeking to protect your TMs.


----------



## S'mon

lonewolfdevel said:


> The reason that we're now in need of educating the public about the trademark is that, within the last year, a few fan-created tools were released that used our trademark within the names. Those tools were primarily for Privateer Press' games, and, probably as a result of these infringing tools...




You need to understand that they're not infringing your Mark.  I can serve burgers in my house and call them McDonald's burgers (I am a member of a sub clan of the MacDonalds, so I even have a justification!) and that is not TM infringement.  I can even put up a set of RPG rules free on the Internet and call them D&D and I'm not infringing WoTC's TM, although I wouldn't be surprised to get a nasty letter from their lawyers seeking a 'chilling effect'.

Your appropriate action is to seek, through publicity, to get people to associate the descriptive phrase Army Builder solely with your product.  You can threaten people if you like (though this may give rise to liability on your part so I wouldn't advise it for a small company like yours), but you cannot successfully sue for non-commercial use of your Mark.


----------



## evilref

lonewolfdevel said:


> Based on our IP attorney's explanation today, the ruling established that trademark rights are handled in analogous fashion to the DMCA. The site owner is not liable for any potential infringement until such time as they are notified. However, once the site owner is notified of an infringement, the site owner can potentially be held liable if they elect not to take action. If they do take action, they are not liable. The onus remains on the rights holder to police the IP. I believe this is entirely consistent with both the quote above and how the DMCA operates.
> 
> Again, I'm relaying the info that I received from our IP attorney, as I understood it. Please verify this info with your sources.





S'mon's essentially said what I would say (and more concisely). If your lawyer has not established with you that non-commercial infringement is not liable, or is offering you the above advice regarding trademark law and the DMCA (In no way does Tiffany versus Ebay establish what your lawyer says in any general sense other than Ebay being potentially culpable because of Ebay's own practices and standards) then I'd strongly suggest finding another IP lawyer before you end up on the losing end of an expensive trademark suit the first time someone stands up to you.


----------



## S'mon

lonewolfdevel said:


> Just to make it official, a public explanation and apology for what went wrong with my message to Privateer can now be found on our website. The link is below for anyone here that's interested in reading it.
> 
> Explanation and Apology Regarding Message to Privateer Press - Lone Wolf Development Forums




I've read your explanation/apology and I think there are still some big problems with it, but I think I've explained why above.

My advice to a small businessman with a registered trade mark: be nice.  

1.  Do go after clear-cut infringing uses of your mark, you need to do this under US law to maintain the validity of your mark.  But you first need to understand what an infringing use is - consult your lawyer on a specific case.  They can advise you whether or not you have a _prima facie_ claim.

2. Where your mark is descriptive, do engage in publicity to educate customers to associate your Mark solely with your business.  But *don't do this by threatening people*!  Don't talk about 'improper use'.  Don't theaten non-commercial users.  At most, a forum post saying something like "Hey guys!  Army Builder is a registed trade mark referring solely to our software" should probably be ok.   If in doubt, ask your spouse/friend/PR people whether your post is projecting a positive image of your company.


----------



## JohnRTroy

S'mon said:


> You need to understand that they're not infringing your Mark.  I can serve burgers in my house and call them McDonald's burgers (I am a member of a sub clan of the MacDonalds, so I even have a justification!) and that is not TM infringement.  I can even put up a set of RPG rules free on the Internet and call them D&D and I'm not infringing WoTC's TM, although I wouldn't be surprised to get a nasty letter from their lawyers seeking a 'chilling effect'.
> 
> Your appropriate action is to seek, through publicity, to get people to associate the descriptive phrase Army Builder solely with your product.  You can threaten people if you like (though this may give rise to liability on your part so I wouldn't advise it for a small company like yours), but you cannot successfully sue for non-commercial use of your Mark.




Actually, the problem is no legal precedent has really been set I believe when it comes to publishing.  Does a software package with the name Microsoft in it constitute non-infringement.  This seems to be a grey area of the law that has not been decided yet, at least not through litigation.  For example, this organization mentions that on this page.



> Many companies claim trademark infringement or dilution when pursuing unauthorized uses of their names or logos on the Web — but it's not entirely clear how these laws apply to noncommercial activity on the Net. Many attorneys argue that this is currently a gray area, but the use of another company's logo on a noncommercial page could be considered trademark infringement. Fair use as applied to trademarks is usually more strictly enforced than it is in regards to copyright.




The key thing also is that different attorneys will have different ways of interpreting--which is how law precedent is decided, by litigation and judicial interpretation of that litigation.  It's also probably biased by the role of the attorney and their beliefs.  You'll probably get different views of IP law if you talk to a lawyer like Lessig than you would from a Hollywood attorney.  Similarly, S'Mon might have more liberal interpretations of fair use than an attorney whose primary purpose is to protect his client.

I do hope we get some more clear legal precedent to the limit of non-commercial use of trademarks.  I dislike overzealous trademark protection--I think McDonald's goes a little to far with their interpretation of "Mc", I don't think Steve Jobs should have a lock on iWhatever.  But I also think if somebody names their RPG rules D&D, or somebody uses the term Microsoft or Apple in their Freeware utility, it's not right.

As far as if LW has a lock on "Army Builder" goes.  I don't see it as being hard for users or chilling towards free speech.  You can call the software by a lot of other names.  Army constructor, army maker, army developer, army designer, army calculator.  And that's only if you don't take out the army part--replace with military, etc.


----------



## Kafen

*still does not see how forum posts even factor into the issue without a transfer of product*

Directly speaking to US law...

Sleekcraft factor 6, dealing with advertising channels, could deal with the method of confusion which relates to a forum. However, it would not transfer the liability of the case to the site unless there was an actual link between the site owner and product - the source of the product confusion. EDIT: Just to give an example, I say. "I know a site that tracks a Product X torrent." The simple usage of the word - even talk about that torrent - does not mean the site is liable for the torrent usage going by even the strictest anti-torrent rulings in Western countries. You have to actually shift over to China, not bashing China, to find a nation willing to compromise online speech in order to turn the simple usage into an actual violation. 

If you go to Playboy vs. Netscape, you see where judges are essentially begging for new laws that adequately deal with trademark infringement beyond Sleekcraft factors. Keeping that in mind... As a mark holder, I would not want to take any case to court that involves the discussion** of my products on a forum without the actual exchange of goods through the forum posts.

*Dislclaimer: I am not a lawyer, but I deal with it with my site management.

** Going with the theory that html-linking to a site is an etiquette breach - not a violation under the law.


----------



## Steerpike7

S'mon said:


> I don't think so, but I'd have to know more.  TM Infringement requires commercial offering of goods or services under my reading of both Lanham and the UK TMA, writing free software and calling it "X's Army Builder" is not infringement.  This is why WoTC/Hasbro lawyers go after you if you put "D&D" on a product you charge money for (Ema's), but not if you're offering a free adventure etc.  With no commercial use you have to use copyright, which is a much trickier prospect.




This is not the case in the U.S.  If you use someone's trademark on a free product and they can demonstrate a likelihood of confusion, you've got trouble.


----------



## Steerpike7

S'mon said:


> You need to understand that they're not infringing your Mark.  I can serve burgers in my house and call them McDonald's burgers (I am a member of a sub clan of the MacDonalds, so I even have a justification!) and that is not TM infringement.




You can do this on your house.  If you were independently wealthy and opened up a restaurant where all you did was give away free burgers to the public, and you called them McDonald's hamburgers and had the McDonald's golden-M trademark on it, you'd have a problem on your hands.

And using McDonald's as an example opens, potentially, another can of worms because that's a famous mark.


----------



## Xyxox

Steerpike7 said:


> You can do this on your house.  If you were independently wealthy and opened up a restaurant where all you did was give away free burgers to the public, and you called them McDonald's hamburgers and had the McDonald's golden-M trademark on it, you'd have a problem on your hands.
> 
> And using McDonald's as an example opens, potentially, another can of worms because that's a famous mark.




After reading this I can't get the storline from Eddie Murphy's _Coming to America_ where the guy owns MacDougal's Hamburgers out of my mind. He was complaining about being sued and in one scene is reading the McDonald's guidebook on restaurant management.

Ironically, Art Buchwald successfully sued Paramount for stealing his idea for the movie.


----------



## rjdafoe

lonewolfdevel said:


> It's incredibly frustrating when people instantly assume the worst and decry you for something that couldn't be farther from the truth. Is it really that difficult for people to ask questions and get the facts before rendering judgement?




Your right.  The problem stems from everything we read about patent trolls, domain name buying, and any number of other things.  At this point, it is natural for alot of people to think negatively first.


----------



## Steerpike7

Xyxox said:


> After reading this I can't get the storline from Eddie Murphy's _Coming to America_ where the guy owns MacDougal's Hamburgers out of my mind. He was complaining about being sued and in one scene is reading the McDonald's guidebook on restaurant management.
> 
> Ironically, Art Buchwald successfully sued Paramount for stealing his idea for the movie.




Heh. Yeah I remember that.  Funny movie.


----------



## JohnRTroy

Steerpike7 said:


> Heh. Yeah I remember that.  Funny movie.




What was really funny was that a local McDonald's in the neighborhood where they were filming called corporate counsel because they didn't know it was being done as a movie and saw those arches go up.


----------



## Steerpike7

> It's incredibly frustrating when people instantly assume the worst and decry you for something that couldn't be farther from the truth. Is it really that difficult for people to ask questions and get the facts before rendering judgement?






rjdafoe said:


> Your right.  The problem stems from everything we read about patent trolls, domain name buying, and any number of other things.  At this point, it is natural for alot of people to think negatively first.




By the same token, the sort of letter initially sent to PP is very serious to the business on the receiving end.  It is the responsibility of the sender to make sure the letter accurately reflects the situation.  

Lonewolfdev asks whether it is really that hard to ask questions and get facts.  I ask whether it is really that hard for a company to run a letter like the one Lonewolfdev sent by their IP counsel before going off half-cocked and causing everything that has followed.

I think Lonewolfdev did the right thing by quickly trying to clear everything up, and that is admirable because not all businesses would bother, but let's not forget that this whole thing could likely have been avoided or at least mitigated.  If lonewolfdev is howling victim here, I'm not buying it.


----------



## Steerpike7

JohnRTroy said:


> What was really funny was that a local McDonald's in the neighborhood where they were filming called corporate counsel because they didn't know it was being done as a movie and saw those arches go up.




That I didn't know.  That is hilarious!


----------



## pawsplay

aboyd said:


> Dire Bear defended JohnRTroy as "knowing his stuff" to which you replied that LoneWolfDevel has been corrected repeatedly.  However, since you're talking about a different guy, it's kinda not related.  Does that make sense?




No, I was talking about JohnRTroy, too. 



> He's taking the same position a bunch of people have -- that the trademark itself probably IS valid, but that the handling of this whole thing with PP could have been done better.  For what it's worth, that's a position I agree with.




And I do not.



> Anyone can search Google Groups -- Usenet forums from the pre-Web Internet days.  And that goes all the way back to 1981.  And guess what?  The phrase "Army Builder" doesn't appear ONCE before about 1997.  "Building armies" and "building my army" appear repeatedly, but that's not quite the same.
> 
> So in my opinion, the trademark is pretty good.




First of all, as I have already noted, it's really difficult to Google this topic. If I try to screen out many obvious distractors, I end up with a lot of links to articles about the C&D letter itself, which is not helpful.

Second, the situation was very different before 1997. In 1996, I was still in college, and I was talking on MUDs and MUSHes at 2400 baud on my modem. Usenet was Usenet. For something like this, I would be thinking more BBS, which is not searchable on Google Groups. 

Third, in those by-gone days of the Internet, a spreadsheet or any piece of software was a pretty good-sized download on a 24.4 modem. Starting in 1997, modems started getting a lot faster, a lot quicker, as did web sites. It's a whole different world.

So the fact that it's hard to Google any references before 1997 does not mean a lot. It would be like trying to track some fad by watching recordings of TV broadcasts from 1949.



> (But I stand by my agreement with others that sending a letter with a deadline, legal threats, and then utterly incorrect demands is douchebaggy.  I like that LoneWolfDevel came back to the thread and corrected himself.  But there was a genuine mistake made -- one that has cost other companies huge amounts in fines.  So I think it's valid to flag that as a problem and react to it, even if other posters think the word douchebag is objectionable.  And at this point I'm really not talking to you, pawsplay, but rather addressing the whole crowd.)




I didn't use that word.


----------



## pawsplay

Just as a test of concept, I have determined that Google Groups also has no references to "army list builder" or "army list calculator" before 1997. Furthermore, it has no hits for "purity test" or "real roleplayer," subjects which I know I was about to pull off of Usenet between 1994 and 1995.

EDIT: And magically, both "purity test" and "army builder" both appear in 1998.


----------



## JohnRTroy

pawsplay said:


> Just as a test of concept, I have determined that Google Groups also has no references to "army list builder" or "army list calculator" before 1997. Furthermore, it has no hits for "purity test" or "real roleplayer," subjects which I know I was about to pull off of Usenet between 1994 and 1995.
> 
> EDIT: And magically, both "purity test" and "army builder" both appear in 1998.




But that doesn't matter.

Here's the thing, Trademark law is limited to what it can do.  It is designed solely to product vendors and consumers from false advertising.  It does not prevent anybody saying "Army Builder".  All it does is the following:  prevent other creators from using the term to describe their particular product (even if it's for free).

But because of that, this isn't a patent thing where you can invalidate it through proof of prior art.  The only way the USPTO would reject it is if (a) they felt it was way too generic a term or (b) if somebody with an existing trademark would object if it was the same or too similar.  Just because people used that term to describe software doesn't mean it is not a good trademark.

The thing is, Army builder passes a synonym test--you can easily call the software something that can convey the message...army maker, army creator, army constructor, army complier, etc.  There are many synonyms for the term "builder" to convey the idea of the software, thus, when combined with the work army it makes a decent, if not spectacular.

And part of it is "first come, first serve".  Like LoneWolfDevel said, they've had this software for a long time.  People are assigned motive based on the awkwardness of the communication.  I can understand the anger in referencing the DMCA, or the tone of the communication--but as far as the Trademark goes, it seems fine.  There doesn't appear to be any evidence that they are "sneaking around" to get a trademark, which some people assume.


----------



## S'mon

JohnRTroy said:


> Actually, the problem is no legal precedent has really been set I believe when it comes to publishing.  Does a software package with the name Microsoft in it constitute non-infringement.  This seems to be a grey area of the law that has not been decided yet, at least not through litigation.  For example, this organization mentions that on this page.
> 
> 
> 
> The key thing also is that different attorneys will have different ways of interpreting--which is how law precedent is decided, by litigation and judicial interpretation of that litigation.  It's also probably biased by the role of the attorney and their beliefs.  You'll probably get different views of IP law if you talk to a lawyer like Lessig than you would from a Hollywood attorney.  Similarly, S'Mon might have more liberal interpretations of fair use than an attorney whose primary purpose is to protect his client.




Look, take a look at what the Lanham Act says:

_§1114. Remedies; infringement; innocent infringment by printers and publishers

    (1)
    Any person who shall, without the consent of the registrant-- 

*use in commerce* any reproduction, counterfeit, copy, or colorable imitation of a registered mark* in connection with the sale, offering for sale, distribution, or advertising of any goods or services* on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive..._

15 USC 1114, Remedies; infringement; innocent infringment by printers and publishers (BitLaw)

This isn't a question of my opinion.  There is question about the exact scope of trademark protection but it clearly does not extend to non-commercial use.


----------



## rjdafoe

JohnRTroy said:


> But that doesn't matter.
> 
> Here's the thing, Trademark law is limited to what it can do. It is designed solely to product vendors and consumers from false advertising. It does not prevent anybody saying "Army Builder". All it does is the following: prevent other creators from using the term to describe their particular product (even if it's for free).
> 
> But because of that, this isn't a patent thing where you can invalidate it through proof of prior art. The only way the USPTO would reject it is if (a) they felt it was way too generic a term or (b) if somebody with an existing trademark would object if it was the same or too similar. Just because people used that term to describe software doesn't mean it is not a good trademark.
> 
> The thing is, Army builder passes a synonym test--you can easily call the software something that can convey the message...army maker, army creator, army constructor, army complier, etc. There are many synonyms for the term "builder" to convey the idea of the software, thus, when combined with the work army it makes a decent, if not spectacular.
> 
> And part of it is "first come, first serve". Like LoneWolfDevel said, they've had this software for a long time. People are assigned motive based on the awkwardness of the communication. I can understand the anger in referencing the DMCA, or the tone of the communication--but as far as the Trademark goes, it seems fine. There doesn't appear to be any evidence that they are "sneaking around" to get a trademark, which some people assume.





All that is in response to the message that Lone Wolf Development said they could find no reference to the words army builder. This has nothing do with invalidating anything. I know for a FACT, that those words were used in the BBS days in talking about spreadsheets, that build armies for miniature games.

That is all it means. When you claim to have no knowledge of two common descriptive words put together in a certain way, people are going to call you out on it.

It doesn't matter what the purpose of trademarking it was, the fact is, it is making everyone else's life difficult - including his own. I am sure he would rather code than track down misuse of his common description trademark. 

I still don't know wether to believe him or not that it was not intentional, in order to corner the market.  The reason for this is that he continues to say that people cannot use the phrase army builder in a description of a product.


----------



## S'mon

Steerpike7 said:


> This is not the case in the U.S.  If you use someone's trademark on a free product and they can demonstrate a likelihood of confusion, you've got trouble.




If you're a company and your offering the product is ancillary to some other money-making activity, such as drawing people to your website to click on advertising links, or upgrading to a paid-for product, then there may be commercial use of the mark.

Now, I've seen judges decide all kinds of things without any legal basis, so it's not impossible a judge could say that published speech or writing, eg of a book or of software code, in itself constituted commerce, but those kinds of judgements tend to get overturned.


----------



## Steerpike7

S'mon said:


> Look, take a look at what the Lanham Act says:
> 
> _§1114. Remedies; infringement; innocent infringment by printers and publishers
> 
> (1)
> Any person who shall, without the consent of the registrant--
> 
> *use in commerce* any reproduction, counterfeit, copy, or colorable imitation of a registered mark* in connection with the sale, offering for sale, distribution, or advertising of any goods or services* on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive..._
> 
> 15 USC 1114, Remedies; infringement; innocent infringment by printers and publishers (BitLaw)
> 
> This isn't a question of my opinion.  There is question about the exact scope of trademark protection but it clearly does not extend to non-commercial use.




The Lanham Act doesn't back up your conclusion. I don't intend to get into a bit argument over it because I do this for a living and making a case in a forum is irrelevant, but I'd hate for anyone to be misled by the things you have been posting here.

"Use in commerce" is a broad phrase, and as the act itself says, "distribution" is covered, not just a sale.  If you inject your free goods into the stream of commerce, whether charging for them or not, you're going to have trouble.

In addition, the Lanham Act isn't the only thing you have to worry about. There are all kinds of claims for unfair business practices that may be available to the trademark owner.  One that comes to mind is Passing Off, which has different elements than trademark infringement and those elements are usually easier to meet.

No one should take from the discussions in these forums that you can't get in trouble for using someone else's trademark if you are not charging for your product.  It is simply not true, and that kind of disinformation can lead a person who doesn't know better to get themselves into legal trouble they could have avoided.  Anyone thinking along these lines should talk to competent IP counsel before acting.

Also, the fact that this isn't a safe course of action should be self-evident in some ways.  If what you are saying is true, then if I start a new software company, a company like Microsoft could ruin me by making a crappy knock-off of my product, slapping my trademarks on it, and giving it away free online.  Sure, it costs them some money but they completely ruin me as a startup who is trying to establish good will for my mark.  I think it should be rather clear to everyone that a variety of claims, some trademark-related and some not, would arise out of that course of action.

The fact that you aren't charging for an item that has an infringing mark on it will not protect you.


----------



## S'mon

Steerpike7 said:


> You can do this on your house.  If you were independently wealthy and opened up a restaurant where all you did was give away free burgers to the public, and you called them McDonald's hamburgers and had the McDonald's golden-M trademark on it, you'd have a problem on your hands.
> 
> And using McDonald's as an example opens, potentially, another can of worms because that's a famous mark.




Well, the word 'restaurant' implies a commercial enterprise, ergo commercial use of the mark.

The Dilution/Tarnishing protections for famous marks still require commercial use of the mark.  If I say bad things about McDonalds they need to sue me in libel, not TM law.  If I use McDonalds as a generic term for fast food burgers they can't do anything.


----------



## Steerpike7

S'mon said:


> If I use McDonalds as a generic term for fast food burgers they can't do anything.




Totally separate issue.  The Federal Trademark Dilution Act is more broad in terms of protections it gives owners of famous marks (they recently removed the need to show actual dilution, for example).  But it has exceptions as required by the First Amendment. Clearly no trademark owner can stop all mention of a mark other than its own use.  You can write about, comment on, and engage in all kinds of other behavior with respect to a trademark.  My point in this thread is that the idea that distributing goods without charging for them protects you from problems with respect to the trademark owner is false.

As for your comment about the restaurant, you are conceding that free distribution of a product can still be "commercial," which is my point.


----------



## S'mon

Steerpike7 said:


> T
> In addition, the Lanham Act isn't the only thing you have to worry about. There are all kinds of claims for unfair business practices that may be available to the trademark owner.  One that comes to mind is Passing Off...
> 
> ...Also, the fact that this isn't a safe course of action should be self-evident in some ways.  If what you are saying is true, then if I start a new software company, a company like Microsoft could ruin me by making a crappy knock-off of my product, slapping my trademarks on it, and giving it away free online.  Sure, it costs them some money but they completely ruin me as a startup who is trying to establish good will for my mark.  I think it should be rather clear to everyone that a variety of claims, some trademark-related and some not, would arise out of that course of action.




1. Passing Off also requires commerce. 

2. Your example is ridiculous.  Think about it.  Microsoft certainly won't put your trade marks on their rip off.  And you'd be suing them for copyright infringement, not TM infringement.   Anyway, as I said above, a free product given away by a company as part of a commercial enterprise (eg bundling internet explorer with windows) certainly can be a commercial activity.   But a private individual writing software, putting it on a website for free download, and calling it 'army builder software', is clearly not making commercial use of the mark, IMO.


----------



## S'mon

Steerpike7 said:


> As for your comment about the restaurant, you are conceding that free distribution of a product can still be "commercial," which is my point.




Well then we agree on that!


----------



## Infiniti2000

S'mon said:


> But a private individual writing software, putting it on a website for free download, and calling it 'army builder software', is clearly not making commercial use of the mark, IMO.




Your humble opinion on this is wrong as far as the US is concerned, though, and hopefully no one who actually needs to know about this will listen to it.


----------



## carmachu

Not wading through the thread, but lone wolf posted an update on dakka and their site(the paragraph is from dakka):

I have a quick update for those of you interested in the situation that unfolded earlier this week between Lone Wolf Development and Privateer Press. In short, it turns out I used an incorrect word in a very critical way, which dramatically changed the message to something never intended. Unfortunately, I didn't realize that issue until a short while ago. A public acknowledgment of this, along with a full explanation, has now been posted on our forums, which can be found at the link below: 

Explanation and Apology Regarding Message to Privateer Press - Lone Wolf Development Forums


----------



## S'mon

Infiniti2000 said:


> Your humble opinion on this is wrong as far as the US is concerned, though, and hopefully no one who actually needs to know about this will listen to it.




Source?

Edit:  Statute, precedent, or at least an _obiter_ statement.  I've seen all kind of specious claims by rightsholders, but I haven't seen anything to back them up.  There may be though - I teach UK law not US - but I've looked and haven't seen it.

My advice is directed against rights holders, especially smaller companies  - don't sue or threaten to sue unless you have a case, and be clear what you need to have a case.  Large companies often do make legally groundless threats & claims, as in the Super Bowl case discussed above, and that may work for them.  My advice to non-rightsholders would be different again - there are lots of things you are wise not to do, even though you legally can do them, because there are people and corporations who can and may make your life uncomfortable if you do so.  That certainly extends to non-commercial uses of trade marks.  This current situation is an example.


----------



## pawsplay

JohnRTroy said:


> But because of that, this isn't a patent thing where you can invalidate it through proof of prior art.  The only way the USPTO would reject it is if (a) they felt it was way too generic a term or (b) if somebody with an existing trademark would object if it was the same or too similar.  Just because people used that term to describe software doesn't mean it is not a good trademark.




Yeah, we covered that pages ago. Do you have anything new to add, or do you want to continue insisting against sense that "army builder" is not generic?


----------



## JohnRTroy

pawsplay said:


> Yeah, we covered that pages ago. Do you have anything new to add, or do you want to continue insisting against sense that "army builder" is not generic?




I and others have added several examples of other so-called "generic" trademarks--Army builder is not really a generic trademark because it does not meet the criteria.  

Pawsplay, if you want to seriously debate this topic, you need to bring facts of law and examples, instead of just going with your gut that "it's generic".  So far, you're not making a very good argument for your own side or interpretation.  I've shown you examples, you haven't given me any good reason why Army Builder is a "bad trademark", other than appeals to emotion.


----------



## Jared Rascher

While I still don't agree with some of the logic involved in the situation, I wanted to say that I do appreciate Rob Bowes' posts in this thread, as well as the apology/clarification that he posted.  I think that it takes a big person to stand up to criticism directly, and to admit that they have made mistakes.


----------



## Iron Sky

KnightErrantJR said:


> While I still don't agree with some of the logic involved in the situation, I wanted to say that I do appreciate Rob Bowes' posts in this thread, as well as the apology/clarification that he posted.  I think that it takes a big person to stand up to criticism directly, and to admit that they have made mistakes.




^^^


----------



## Dragonhelm

KnightErrantJR said:


> While I still don't agree with some of the logic involved in the situation, I wanted to say that I do appreciate Rob Bowes' posts in this thread, as well as the apology/clarification that he posted.  I think that it takes a big person to stand up to criticism directly, and to admit that they have made mistakes.




Agreed.  I tend to respect folks who admit to their mistakes more than if they didn't.

Thanks for posting the apology, Lone Wolf.


----------



## pawsplay

JohnRTroy said:


> I and others have added several examples of other so-called "generic" trademarks--Army builder is not really a generic trademark because it does not meet the criteria.
> 
> Pawsplay, if you want to seriously debate this topic, you need to bring facts of law and examples, instead of just going with your gut that "it's generic".  So far, you're not making a very good argument for your own side or interpretation.  I've shown you examples, you haven't given me any good reason why Army Builder is a "bad trademark", other than appeals to emotion.




Seriously, you're just repeating yourself. As I am not really interested in repeating myself, I guess you're just going to have to live with the fact I have no "good reasons."


----------



## Dire Bare

pawsplay said:


> Seriously, you're just repeating yourself. As I am not really interested in repeating myself, I guess you're just going to have to live with the fact I have no "good reasons."




You both are repeating yourselves.

JohnRTroy is repeating that Army Builder, according to trademark law and tradition, is not generic.  He backs this up with well reasoned examples and knowledge.

You keep repeating, "It's generic!"  "Because it is!"

Pawsplay, we get it.  You personally don't think that Army Builder was a good choice of name for this product because it's too generic.  But as I said before, just because you don't like it, doesn't make it true.


----------



## pawsplay

Dire Bare said:


> You both are repeating yourselves.
> 
> JohnRTroy is repeating that Army Builder, according to trademark law and tradition, is not generic.  He backs this up with well reasoned examples and knowledge.
> 
> You keep repeating, "It's generic!"  "Because it is!"
> 
> Pawsplay, we get it.  You personally don't think that Army Builder was a good choice of name for this product because it's too generic.  But as I said before, just because you don't like it, doesn't make it true.




I spelled out my argument in the first page of this thread, post #13. "Army building" is something wargamers do; an "army builder" is something used in that process. It's generic by the fact anyone who didn't like Army Builder would ask what other "army builders" are out there. I even gave you a numbered list of reasons why Army Builder is not as good a TM as Player's Handbook (which is a weak TM to begin with). Of course, I doubt you noticed/cared, since if anything has become clear in this discussion, it's that you are barely reading my posts.

As to what you said before... you said it before. I have no idea what you think is gained by saying it again. It's still unhelpful and condescending.


----------



## Perram

I'm mostly satisfied with the results of this thread.  While I still think Army Builder is a rather generic name, I don't think its a bad name for the product, which as I said before, I think gives it a bit of charm.  Simple and to the point.

Maybe they shouldn't have gotten the TM on it, maybe they should, that's water under the bridge at this point.  Them enforcing this mark against other programs specifically named 'Army Builder' is to be expected.

I am afraid there is little they will be able to do about preventing the "Improper" use, though.  

*But*

To those who are dismissing the level of reaction that the community raised against this as simple internet flaming: _This is how consumers need to react_. _ If no one ever says anything, nothing gets changed._  I doubt we would have seen an apology  letter or clarification without a strong and vocal response against the letter and Lone Wolf's stance.

I thank the staff of ENWorld for making this issue public and providing a place for these voices to be raised.

If you are dissatisfied with a product or company, let people know, and why!  The reverse is true, if you are satisfied with a product do the same!  The consumer isn't powerless, no business can survive without customers. (Well, traditional businesses at least.)  Our best tools are being informed consumers and sharing our experiences so that others can be informed as well.

*And finally, to Lone Wolf*:

Please consider better public relations in the future.  While I am glad that you came to these forums yourself to participate in the discussion, none of this needed to occur in the first place.  

This is also the third time I've seen you voice your discomfort that issues were brought out to the public.  You should assume that anything you do as a business will be.

And also: Let your Lawyer handle your legal business.


----------



## S'mon

Dire Bare said:


> You both are repeating yourselves.
> 
> JohnRTroy is repeating that Army Builder, according to trademark law and tradition, is not generic.  He backs this up with well reasoned examples and knowledge.
> 
> You keep repeating, "It's generic!"  "Because it is!"
> 
> Pawsplay, we get it.  You personally don't think that Army Builder was a good choice of name for this product because it's too generic.  But as I said before, just because you don't like it, doesn't make it true.




Whether it's generic or not would be for a court to decide.  It's a descriptive mark, it's a weak mark, but I'd think it's not necessarily generic - it is _capable_ of distinguishing this software from others.  Has it acquired distinctiveness through use?  Arguably.


----------



## S'mon

Perram said:


> And also: Let your Lawyer handle your legal business.




Yes, anything involving threats or warning should be handled through a lawyer.  Obviously normally commercial activity involves eg contracting and you don't normally need a lawyer for buying and selling.  Anything adversarial though, you need a lawyer.  Absolutely, anything involving claims of intellectual property infringement (in the UK you can bring a claim for debt recovery up to £5,000 in small claims court without needing a lawyer).  You don't see WotC games developers sending out C&D letters, do you?  They refer to their lawyers.  Their lawyers often tell them "don't do anything" - unlike TSR, WoTC/Hasbro have real lawyers who seem to know their stuff very well.


----------



## lonewolfdevel

lonewolfdevel said:


> What he told me was that, based on the ruling, the handling of trademarks is essentially analogous to the DMCA. It's quite possible that the various elements of the ruling establish comparable mechanics for trademarks that largely parallel those of the DMCA. If so, no explicit reference would be necessary, yet an analogous behavior would be established.
> 
> I will ask him about this specific issue and report back. Unfortunately, it's Friday night, so that likely won't be until Monday night. I'll send him an email, just in case he checks it over the weekend, but it's unlikely I'll hear back over the weekend. It definitely won't be tonight, since it's almost 3am in his timezone.




Our IP attorney had some downtime today and got back to me on this. It seems my statement above was basically accurate. The ruling set forth a scheme that draws heavily from the DMCA framework, without calling it such. The bottom line is that the ruling clarified what forum owners should do to avoid liability. This is his opinion, which others here may debate, but I'm going to trust it.

Oh, and apparently the fact that the specific case had to do with counterfeit goods does not limit the ruling's scope. He says it established basic rules for handling trademark situations in general. Again, others can disagree with this interpretation if they choose.


----------



## Kafen

Using the DMCA in such a manner? If people think the banter from forum gamers is rough, I can only imagine the discomfort for all parties when the EFF sends a lawyer instead of hitting the submit button.


----------



## lonewolfdevel

Steerpike7 said:


> I think Lonewolfdev did the right thing by quickly trying to clear everything up, and that is admirable because not all businesses would bother, but let's not forget that this whole thing could likely have been avoided or at least mitigated.




I agree and this has been quite a learning experience. Suffice to say, it won't be a repeated mistake.



Steerpike7 said:


> If lonewolfdev is howling victim here, I'm not buying it.




Prior to the realization that the word "improper" was used instead of "infringing", I took exception to some of the claims being made.

For example, _*if that one word change is made*_, we outlined what needed to be done on the forums and stated clearly that we were prepared to handle it, since it's ultimately our responsibility. Privateer was afforded the option of doing it, if they so chose, and they were only asked to tell us whether they wanted to handle it. Various folks quoting the message took the explanation of what was needed out of context and claimed we demanded Privateer do it, which would not be accurate at all. Even Morrus did this on the front page news item.

Once the realization set in about using the wrong word, much of this became moot. I think you'll find that my tone at that point changed from defensive to conciliatory.


----------



## S'mon

lonewolfdevel said:


> Our IP attorney had some downtime today and got back to me on this. It seems my statement above was basically accurate. The ruling set forth a scheme that draws heavily from the DMCA framework, without calling it such. The bottom line is that the ruling clarified what forum owners should do to avoid liability. This is his opinion, which others here may debate, but I'm going to trust it.
> 
> Oh, and apparently the fact that the specific case had to do with counterfeit goods does not limit the ruling's scope. He says it established basic rules for handling trademark situations in general. Again, others can disagree with this interpretation if they choose.




Your lawyer was technically accurate but it sounds like his statement to you was misleading.  From what you say it doesn't sound like he has done much to clarify it either.  If I were you I wouldn't be that happy with him.  OTOH it may be that you are still misunderstanding what he is saying to you - _Tiffany_ concerned *limitations *on contributory liability by hosters, it did not create a new framework for holding hosts liable, which is how you seem to have approached it.


----------



## lonewolfdevel

rjdafoe said:


> It doesn't matter what the purpose of trademarking it was, the fact is, it is making everyone else's life difficult - including his own. I am sure he would rather code than track down misuse of his common description trademark.




So very true....



rjdafoe said:


> I still don't know wether to believe him or not that it was not intentional, in order to corner the market.  The reason for this is that he continues to say that people cannot use the phrase army builder in a description of a product.




There are two things we're saying, which appear to be getting conflated here.

1. Publishers of software tools/products associated with gaming cannot use our trademark as part of the name or description of such tools. If a website has a reference to such a tool on it, we must also ask them to take that reference down.

2. Consumers can use whatever terms they want, whenever they want, and _*can*_ use the term "army builder" in a descriptive manner. However, we don't want our trademark to become generic, so when we see folks doing that, we must strive to make them aware that we have the trademark. If people are aware of the trademark and choose to use the term descriptively anyways, that's their right. For example, lots of folks in the South call any soft drink "a coke" (e.g. "What kinda coke ya'll want?").

Does that help?


----------



## lonewolfdevel

S'mon said:


> Your lawyer was technically accurate but it sounds like his statement to you was misleading.  From what you say it doesn't sound like he has done much to clarify it either.  If I were you I wouldn't be that happy with him.  OTOH it may be that you are still misunderstanding what he is saying to you - _Tiffany_ concerned *limitations *on contributory liability by hosters, it did not create a new framework for holding hosts liable, which is how you seem to have approached it.




Actually, he gave me a lot more information, but I'm electing not to go into more detail here. The reason for that is simply that I don't understand the subtleties of this stuff and won't be able to argue/defend any of the points he made to me. Since I can't do that, it's folly for me to engage this further.

That being said, if you'd like to consult with him directly on these issues, I'll be happy to provide you with his contact info. Please email me for the info if you'd like it. Please also include your full contact info so that I can relay it to him.


----------



## pawsplay

lonewolfdevel said:


> I agree and this has been quite a learning experience. Suffice to say, it won't be a repeated mistake.
> 
> 
> 
> Prior to the realization that the word "improper" was used instead of "infringing", I took exception to some of the claims being made.
> 
> For example, _*if that one word change is made*_, we outlined what needed to be done on the forums and stated clearly that we were prepared to handle it, since it's ultimately our responsibility. Privateer was afforded the option of doing it, if they so chose, and they were only asked to tell us whether they wanted to handle it. Various folks quoting the message took the explanation of what was needed out of context and claimed we demanded Privateer do it, which would not be accurate at all. Even Morrus did this on the front page news item.
> 
> Once the realization set in about using the wrong word, much of this became moot. I think you'll find that my tone at that point changed from defensive to conciliatory.




Well, kudos for coming here and talking it out with folks. I think it did help. I'm going to go ahead and say that your tone has changed to less defensive and more conciliatory. Maybe this is just my background in counseling here, but it seems to me that you several times fell into the habit of telling people what to think, instead of telling them the facts. For instance, the above, while essentially accurate in the events that occured, seems to convey the interpretation this was all some big misunderstanding. However, it is very much my viewpoint that misunderstandings compounded a very basic issue which was clearly understood; you cannot defend this mark without engaging in some of what other people are going to view as bullying. While you can, and apparently have decided to, try to manage the distinctiveness of this mark through various actions, clearly you understand the potential and the actuality of it being genericized. 

I think you should consider carefully the relative merits of spending your time and energy defending the mark, versus developing it and doing what you enjoy and profit from. Especially, I would urge you to be cautious about pursuing certain actions with zeal, considering that your business model depends on friendly and non-litigious cooperation between different mark holders in the same industry. While a business depends on certain rights and assurances, a business does not consist of rights and assurances, a business is a relationship with your customers and other businesses in the industry.


----------



## S'mon

lonewolfdevel said:


> 1. Publishers of software tools/products associated with gaming cannot use our trademark as part of the name or description of such tools.




I don't think you can stop them using it descriptively - "Our program XX is army builder software" - that's the problem with having a descriptive mark.  Your mark would actually be entirely unregistrable as an EU-wide mark simply due to its being capable of being used descriptively (per ECJ in _Doublemint_/_Wrigleys vs OHIM_).


----------



## Garthanos

S'mon said:


> I don't think you can stop them using it descriptively - "Our program XX is army builder software" - that's the problem with having a descriptive mark.  Your mark would actually be entirely unregistrable as an EU-wide mark simply due to its being capable of being used descriptively (per ECJ in _Doublemint_/_Wrigleys vs OHIM_).




And the US has free-speech as one of the highest laws of the land and trademarks should not ever be allowed to supercede it... 

But the us patent office is in the business of keeping lawyers in business so they let almost anything get through and let the lawyers duke it out, after all they aren't really qualified to make most of the decisions about what to deny or not. (I am only mildly exaggerating) so in effect it takes a bunch of money to undo abusive patents and undo abusive trademarks.... they rarely get preemptively stopped.

I am pretty sure by law you could  even  describe a company  as Dyas Designs - a lone wolf developer. Let alone a product as Arcane Enemies  - a fantasy army builder.

http://cyber.law.harvard.edu/~wseltzer/INTA/sld016.htm


----------



## CapnZapp

Just read the front page, and don't want to read the huge thread, so let me just say:



> Referring to roster construction tools generally as "army builders" is improper




You, Sir, are a jackass who have lost all perspective. Do not expect anyone to take you seriously. Jeez.


----------



## Umbran

CapnZapp said:


> You, Sir, are a jackass who have lost all perspective.





And you, Sir, are a poster who has either forgotten that the place he's posting has rules, or has decided that he doesn't care.

Either way - this is unacceptable.


----------



## AdmundfortGeographer

Well, that was kind of like a scene in a comedy where after all the tension has passed and everyone has hugged then some . . . you know. . . barges in with guns aimed at everyone like nothing had changed.


----------



## Mark

I am making an R-Mee Build-R.


----------



## William Ronald

Mark said:


> I am making an R-Mee Build-R.




That is a bit easier to remember than Militant Forces Construction Software or some of the other possible names: Military Organization List Establisher (MOLE). 

One thing that I have learned is that words have the power to hurt or to heal.  So, perhaps in the future, a lot of these problems can be avoided.  In legal matters, it probably  makes sense to consult a lawyer before releasing anything much like I would run a press release about new software past someone who developed it to ensure that all terms were accurate.


----------



## lonewolfdevel

Umbran said:


> And you, Sir, are a poster who has either forgotten that the place he's posting has rules, or has decided that he doesn't care.
> 
> Either way - this is unacceptable.




To the moderators:
It appears the front page news item is inciting posters who aren't bothering to read the thread, and the thread title could be contributing as well. Is it unreasonable to ask that some additional clarifications be added to the front page item to address what has transpired here? And to tweak the thread title a little bit?

Thanks for considering this request....


----------



## Perram

lonewolfdevel said:


> To the moderators:
> It appears the front page news item is inciting posters who aren't bothering to read the thread, and the thread title could be contributing as well. Is it unreasonable to ask that some additional clarifications be added to the front page item to address what has transpired here? And to tweak the thread title a little bit?
> 
> Thanks for considering this request....




They have already posted a follow-up on the front page... while the brash outburst by CapnZapp was certainly uncalled for, I don't think another followup front page news story should be needed as no major shifts have happened since the last one.


----------



## lonewolfdevel

S'mon said:


> I don't think you can stop them using it descriptively - "Our program XX is army builder software" - that's the problem with having a descriptive mark.  Your mark would actually be entirely unregistrable as an EU-wide mark simply due to its being capable of being used descriptively (per ECJ in _Doublemint_/_Wrigleys vs OHIM_).




Our IP attorney maintains that, according to the rules here in the US, we are able to stop a competing product from using our trademark to identify itself in the manner you describe. And based on posts from a few others here that appear well-versed in US trademarks, it seems that US laws have some distinct differences from other regions. So I am inclined to believe our attorney on this.

I'll be providing you with his contact info shortly, and you can consult with him independently if you wish.


----------



## lonewolfdevel

Perram said:


> They have already posted a follow-up on the front page...




If someone simply reads the original post from the 3rd, it includes various follow-up bits, but nothing about the explanation and apology. And that post is linked to from numerous other sites. Consequently, someone arriving from another site can readily miss the new announcement, which is a wholly independent post.

So, I guess what I'm requesting is that a brief reference and link to the follow-up announcement be added to the original front page post. That will hopefully avoid the potential for someone overlooking the new developments.


----------



## thzero

Not an unreasonable request.   Perhaps its best to contact Morris directly?



lonewolfdevel said:


> If someone simply reads the original post from the 3rd, it includes various follow-up bits, but nothing about the explanation and apology. And that post is linked to from numerous other sites. Consequently, someone arriving from another site can readily miss the new announcement, which is a wholly independent post.
> 
> So, I guess what I'm requesting is that a brief reference and link to the follow-up announcement be added to the original front page post. That will hopefully avoid the potential for someone overlooking the new developments.


----------



## Umbran

Folks,

I refer you to The Rules - if you need or want a moderator or admin to do something about a particular thread, reporting a post or taking it to e-mail/PM is the appropriate way to go about it.  Requests for such action in the thread itself are *not appropriate*, and are unlikely to get a positive response from the staff.  

Addresses for the moderators are available in a post stickied to the top of the Meta Forum.

Thanks for your time and attention.


----------



## Infiniti2000

S'mon said:


> Source?
> 
> Edit:  Statute, precedent, or at least an _obiter_ statement.  I've seen all kind of specious claims by rightsholders, but I haven't seen anything to back them up.  There may be though - I teach UK law not US - but I've looked and haven't seen it.
> 
> My advice is directed against rights holders, especially smaller companies  - don't sue or threaten to sue unless you have a case, and be clear what you need to have a case.



 That's a key distinction (advice to rightsholder and not potential infringers) that is not present in your previous post.  My take from your statement was essentially "feel free to use what you consider weak marks in your software name because they won't be able to prosecute you."  This is terrible advice.  Your previous statement is quoted again, below, for convenience.


			
				S'mon said:
			
		

> But a private individual writing software, putting it on a website for free download, and calling it 'army builder software', is clearly not making commercial use of the mark, IMO.




Regarding a source, though, I'm not sure what to provide except the whole of trademark law in the U.S.  I'll point out that you're commenting on a case between two U.S. companies, so any UK or international laws you know are superficial at best.  I certainly can't say that calling your software "army builder software" would infringe, but neither could a real U.S. PT attorney.  That would only be decided in a court of law.  What I can say, however, is that your advice that it's (essentially) ok is not sound.  Note that I'm making the connection that when you say its "clearly not making commercial use" means that you say the person is not infringing.  I think that's what you intended to imply.


----------



## pedr

Infiniti2000 said:


> Regarding a source, though, I'm not sure what to provide except the whole of trademark law in the U.S.  I



Well surely a source would be an example of a case where the interpretation of the relevant Act you believe to be accurate is the reason for the case being decided in the way it was, which would indicate that the interpretation which S'mon (reasonably) puts on the words of the Act is not the currently accepted one among the judiciary. 

As far as I can tell, S'mon's posted _law_ to back up his interpretations and then been faced with people saying "that's not right". Which isn't very helpful, because S'mon doesn't strike me as wanting to be obtuse or stubborn in his opinions, and would presumably welcome pointers to sources (other statutes, the kinds of cases mentioned above, even journal/law review articles and text-books) which negative his propositions, if they are, in fact, inaccurate. 

That's something of a digression for this thread, but not a great one: there seem to be three strands 1) Was Lone Wolf wise to act as it did? 2) Was Lone Wolf legally correct/entitled to act as it did? 3) Are Lone Wolf's understandings of TM law accurate? The answers to all three could be useful for Lone Wolf _and_ other companies in the same position in future (not to mention Morrus and other forum hosts/operators reading!)


----------



## Infiniti2000

pedr said:


> 3) Are Lone Wolf's understandings of TM law accurate? The answers to all three could be useful for Lone Wolf _and_ other companies in the same position in future (not to mention Morrus and other forum hosts/operators reading!)




Yes, this answer would be useful, but impossible to obtain unless counsel decided to post in this forum.  I don't see any, however, so all we have are "internet people."  These people (myself included obviously) are incapable of providing fact on this, regardless of how well informed.  Not only that, but these people should NOT provide advice on courses of action except to go hire legal counsel.  I say this because fact (i.e. law) is always left in the hands of the court to decide.

So, yes I know a little bit about trademark (and patent) law, enough to make me dangerous so to speak.  I have experience in the U.S. court system with it, enough to make me believe my statements that S'mon gave bad advice (from a U.S. perspective).   I neither can, nor will, provide example court cases.  On one hand, I can't divulge the ones I am/was involved in and on another hand, I don't follow case law nor do I care to research it.  If I had to guess, however, I would say about 50% of the trademark case law out there probably pertains to and supports my previous point.

Regarding Morrus, though, and this forum, that entirely depends on where this forum is hosted.  I'm guessing in the UK which I think would make all U.S.-based trademark law comments irrelevant.  U.S. trademark law doesn't apply to websites hosted outside the U.S., does it?  See, now *this* area is where I think S'mon's expertise lies, though as a non-attorney he still shouldn't provide legal advice.


----------



## S'mon

Infiniti2000 said:


> Regarding a source, though, I'm not sure what to provide except the whole of trademark law in the U.S.  I'll point out that you're commenting on a case between two U.S. companies, so any UK or international laws you know are superficial at best.  I certainly can't say that calling your software "army builder software" would infringe, but neither could a real U.S. PT attorney.  That would only be decided in a court of law.  What I can say, however, is that your advice that it's (essentially) ok is not sound.  Note that I'm making the connection that when you say its "clearly not making commercial use" means that you say the person is not infringing.  I think that's what you intended to imply.




No commerce = no commercial use.  The biggest stretch I can find of what constitutes commercial use was the finding by a New Jersey court in jewsforjesus.com that having paid-for advertising on a 'sucks' site constituted commercial use of the TM embodied by the domain name.  That's still a far cry from "any freely available literary work" (which is what freely downloadable software is) is making commercial use of the mark embodied in its title.  If that were the case, any speech would be commercial speech.  Of course there are arguments you could raise in court "This work is affecting my business!  Ergo it must be commercial!" but I wouldn't expect them to succeed.

I think you are kinda right that when I wrote "You can" I should have put "but I wouldn't advise it, because you may still be sued even though you haven't actually infringed the Mark".  I didn't say that because my advice - don't sue - was directed to rightsholders like lonewolf.  And as a practical matter, if eg you are a huge corporation that's a major local employer you may well win a case in a local court of first instance even without any legal basis - _c'est la vie_.  That doesn't apply to lonewolf though.


----------



## S'mon

Infiniti2000 said:


> That's a key distinction (advice to rightsholder and not potential infringers) that is not present in your previous post.  My take from your statement was essentially "feel free to use what you consider weak marks in your software name because they won't be able to prosecute you."  This is terrible advice.  Your previous statement is quoted again, below, for convenience.




"Prosecute" is a term in criminal law.  You mean "sue"?


----------



## S'mon

Infiniti2000 said:


> Note that I'm making the connection that when you say its "clearly not making commercial use" means that you say the person is not infringing.  I think that's what you intended to imply.




You do accept that the respondent/defendant making commercial use of the mark is a prerequisite for a finding of TM infringement under the Lanham Act, don't you?


----------



## S'mon

Infiniti2000 said:


> Regarding a source, though, I'm not sure what to provide except the whole of trademark law in the U.S.




That is not helpful to me, and it wouldn't get you far in a court of law, either.

Edit: I feel I may have been sucked into a "Someone is WRONG on the Internet!"  discussion... :\

lonewolfdevel has supplied me with his lawyer's contact details, I expect he can give me a more useful response than what I'm getting here.  Or I could crank up the Westlaw... *sigh*


----------



## S'mon

pedr said:


> Well surely a source would be an example of a case where the interpretation of the relevant Act you believe to be accurate is the reason for the case being decided in the way it was, which would indicate that the interpretation which S'mon (reasonably) puts on the words of the Act is not the currently accepted one among the judiciary.
> 
> As far as I can tell, S'mon's posted _law_ to back up his interpretations and then been faced with people saying "that's not right". Which isn't very helpful, because S'mon doesn't strike me as wanting to be obtuse or stubborn in his opinions, and would presumably welcome pointers to sources (other statutes, the kinds of cases mentioned above, even journal/law review articles and text-books) which negative his propositions, if they are, in fact, inaccurate.




Well said, thanks.  This does make me realise I've been wasting too much time I could be prepping tomorrow's tutorials, or spending with my family.


----------



## S'mon

infiniti2000 said:


> i neither can, nor will, provide example court cases.  On one hand, i can't divulge the ones i am/was involved in and on another hand, i don't follow case law nor do i care to research it.  If i had to guess, however, i would say about 50% of the trademark case law out there probably pertains to and supports my previous point.




lol.


----------



## S'mon

Infiniti2000 said:


> Regarding Morrus, though, and this forum, that entirely depends on where this forum is hosted.  I'm guessing in the UK which I think would make all U.S.-based trademark law comments irrelevant.  U.S. trademark law doesn't apply to websites hosted outside the U.S., does it?  See, now *this* area is where I think S'mon's expertise lies, though as a non-attorney he still shouldn't provide legal advice.




1.  I'm not providing legal advice.   "Opinion about the law" =/= legal advice.  Legal advice is "You have a case against X, because of Y and Z, but they may raise a defence of AA."  Anyone is entitled to an opinion about the law, even law lecturers from other jurisdictions.

2.  You apparently don't know this, but TM law is fairly heavily internationally harmonised, thanks partly to a variety of conventions including the 1994 TRIPS treaty.  There are certainly national differences, which I am interested in finding out more about.  We do deal with a fair number of US TM cases though on the courses I teach, and I haven't seen a big difference in their outcome compared to how it'd go in the UK.


----------



## S'mon

Infiniti2000 said:


> U.S. trademark law doesn't apply to websites hosted outside the U.S., does it?




US law applies in US courts.  If I have a website in the UK, and you're in the US and want to sue me for TM infringement, you persuade a US court to take the case.  If you can show I'm targetting my business at the US then they'd take the case.  Enforcing the US court's judgement in the UK is another matter, though.  There are conventions on cross-border enforcement of judgements, but it can be difficult and as a practical matter few companies want to mess with that.

Now I'm going to be late getting home.


----------



## Mark

S'mon said:


> "Prosecute" is a term in criminal law.  You mean "sue"?





Perhaps he means "prosecute" as in _prosecute a war_ in which case he will need to utilize some sort of device to determine the best troop configurations needed.  _If only there were such an application . . ._


----------



## Mark Chance

Mark said:


> Perhaps he means "prosecute" as in _prosecute a war_ in which case he will need to utilize some sort of device to determine the best troop configurations needed.  _If only there were such an application . . ._




If that application individually outfitted soldiers with weapons and gear, would it be an Arm Me Builder?


----------



## S'mon

FWIW - like I thought, I came across a comment that _Playboy _v _Welles_ restated that 'the “fair use” defense forbids a trademark owner from appropriating a descriptive term for his or her exclusive use and preventing others from accurately describing a characteristic of their goods' - see eg:
ELECTRONIC BILLBOARDS ALONG THE INFORMATION SUPERHIGHWAY: LIABILITY UNDER THE LANHAM ACT FOR USING TRADEMARKS TO KEY INTERNET BANNER ADS
case ref: Playboy Enter., Inc. v. Welles, 7 F. Supp. 2d 1098, 1104 (S.D. Cal. 1998), aff’d, 162 F.3d 1169 (9th Cir. 1998).

I believe that's a pretty famous case which any US IP lawyer working on TM law & the Internet should be aware of.


----------



## pawsplay

S'mon said:


> FWIW - like I thought, I came across a comment that _Playboy _v _Welles_ restated that 'the “fair use” defense forbids a trademark owner from appropriating a descriptive term for his or her exclusive use and preventing others from accurately describing a characteristic of their goods' - see eg:
> ELECTRONIC BILLBOARDS ALONG THE INFORMATION SUPERHIGHWAY: LIABILITY UNDER THE LANHAM ACT FOR USING TRADEMARKS TO KEY INTERNET BANNER ADS
> case ref: Playboy Enter., Inc. v. Welles, 7 F. Supp. 2d 1098, 1104 (S.D. Cal. 1998), aff’d, 162 F.3d 1169 (9th Cir. 1998).
> 
> I believe that's a pretty famous case which any US IP lawyer working on TM law & the Internet should be aware of.




Certainly, it would make the world a difficult place if I could trademark a word or combination of words, and through legal intimidation causing others to stop using it in a generic sense, _make it true_ that the word was not generic.


----------



## Sabriel

Wow. Long thread. But interesting.

I used to think that unlike copyright and patent law (for which IMO the scales are in the middle of tipping over), trademark law was still a case of the Good outweighing the Evil. Now... I'm not so sure. At least, threads like this indicate the laws and precedents thereof are, or are becoming, onerous.

Do I understand correctly that - whereas the trademarks "X's Foo" and "Y's Foo" might happily coexist(?) - if X instead trademarks simply "Foo", Y cannot use "Y's Foo" to sell their own product? Thus Army Builder / Y's Army Builder, likewise Hot Apple Sauce / Y's Hot Apple Sauce... and so on?

The short fiction story "Melancholy Elephants" weighs upon me; I am concerned that its analysis of copyright also covers trademarks (perhaps all "IP"). I note that language, like music, has practical combinatorial limits, and trademarks already have terms that can extend indefinitely.

The consequences of our laws are not always apparent on their enactment. We must from time to time look upon our actions and our capabilities, and decide if they are still appropriate for our future; merely because "the law" allows us to do something, does not mean we should.

It can come back and bite us in places Grandma would not approve.


----------



## JohnRTroy

Sabriel said:


> Wow. Long thread. But interesting.
> 
> I used to think that unlike copyright and patent law (for which IMO the scales are in the middle of tipping over), trademark law was still a case of the Good outweighing the Evil. Now... I'm not so sure. At least, threads like this indicate the laws and precedents thereof are, or are becoming, onerous.




I honestly don't think this is the case.  In fact, one of the reasons I've been debating so much in this thread is that so many people nowadays have a knee-jerk reaction to any sort of IP law, or they start foaming at the mouth regarding lawsuits (as in, anybody who is the "victim" of a lawsuit is good and the instigator is always the bad or "villain").  That's why I started going to the USPTO site to find some facts.

The key thing is the perception of "generic", which is very subjective.  Granted, Army Builder is a weaker trademark than others, but it does seem to pass the test, at least based on some of the examples I posted way back.

The key term I believe is "generic", as in a word that can't be replaced by a synonym.  There is no way you could trademark a single word like pencil, because there is not another good English word for pencil.  A term like "red pencil" is descriptive, but it would also depend on how that trademark is used--a pencil manufacturer might not be able to trademark that--or at least if somebody else had a product of red pencils they couldn't use the trademark to prevent that product from being sold.  However, Red Pencil might be a good name for a gaming company, and thus a legitimate trademark _in that context_.  In this case I don't see Army Builder as being as generic as Hot Apple Sauce.  

The key thing is Trademarks can't be used to prevent language from being used.  They are simply to prevent brand confusion.  

The Playboy case S'Mon invokes involves a concept called nominative use, which means Trademarks can't be used to prevent discussion of the product itself.  In the Playboy case, the Playboy Playmate had the rights to indicate she was a playboy playmate, because there is no way to describe that elsewhere.

I'm not sure Army Builder can fall under that, specifically because there are many synonyms that can be used.  You can call it an army maker or an army constructor and that would still convey the means.  You can't tell me that you absolutely can't communicate what your software does without using the word combo "army builder", because there are several effective synonyms.  That is not the case of "playboy playmate", because the centerfold has the right to mention where she worked.

I think the key thing is a competing product can't TITLE itself Army Builder, you might be able to say "The software is used to build or create armies" in describing it, but the key thing would be the title--because even if you give your software away for free this may count as trade.  At least that's how I interpret the law, and others appear to agree with me.   Anybody creating a free tool IMO would need to make sure they don't use the Trademark in the Title.  

Trademark Law can be abused by some--Monster Cable tried to sue others who used the name including Monster.com and Pixar for Monsters, Inc.  But they have a history of being over-litageous.  But I don't think the general trademark laws are bad--in fact out of all three IP laws, they are very good.  They protect abuse--without them anybody could use the terms and cause consumer confusion.  I don't want to Eat Piratecat's version of Chef Boyadee, I don't want to read Joe Shmoes version of Superman, and I don't want to use the Nigerian Hacker's version of Windows 7.


----------



## lonewolfdevel

S'mon said:


> FWIW - like I thought, I came across a comment that _Playboy _v _Welles_ restated that 'the “fair use” defense forbids a trademark owner from appropriating a descriptive term for his or her exclusive use and preventing others from accurately describing a characteristic of their goods' - see eg:
> ELECTRONIC BILLBOARDS ALONG THE INFORMATION SUPERHIGHWAY: LIABILITY UNDER THE LANHAM ACT FOR USING TRADEMARKS TO KEY INTERNET BANNER ADS
> case ref: Playboy Enter., Inc. v. Welles, 7 F. Supp. 2d 1098, 1104 (S.D. Cal. 1998), aff’d, 162 F.3d 1169 (9th Cir. 1998).
> 
> I believe that's a pretty famous case which any US IP lawyer working on TM law & the Internet should be aware of.




Your argument hinges on the position that the trademark is either generic or descriptive. From a legal standpoint, though, all presumptions are just the opposite regarding the Army Builder trademark. There are four reasons why:

1. The term was not in general use before we began using it. This fact has been confirmed by other posters here already.

2. The term is suggestive at best - not descriptive. We acknowledge that it isn't fanciful, but the program isn't "building" anything, per se, as it operates virtually, and the end result is not an "army" but a roster sheet.

3. The trademark has acquired secondary meaning after all these years. When someone posts to a miniatures forum that they need an "army builder data file", virtually everyone on that forum knows that what is being sought is a data file for Lone Wolf Development's product.

4. Under US trademark law, our mark is presumptively incontestable on grounds of descriptiveness (and certain other grounds) by virtue of 5 years of continuous use without having been canceled and us having filed the necessary affidavits.

Ultimately, this should all be taken into account through the lens of case law, which is VERY reluctant to strip a trademark owner of rights merely because there has been some generic usage of a mark.

This is a paraphrased version of the response I received from our IP attorney about this. He also said that he didn't hear from you today, so I have to ask whether you received his contact info successfully.


----------



## lonewolfdevel

Sabriel said:


> The consequences of our laws are not always apparent on their enactment. We must from time to time look upon our actions and our capabilities, and decide if they are still appropriate for our future; merely because "the law" allows us to do something, does not mean we should.




This is generally true and, with most types of property, the owner can elect when to enforce its rights and when not to. Unfortunately, the rules for trademarks are very clear, and there is no selectivity afforded to the rights owner. If you have a trademark, you must police it equally with everyone. So there is no option to enforce it against Company X but allow it to slide with Fan Y. If a trademark is knowingly allowed to slide with Fan Y, then Company Z can come in later and use that fact to argue the trademark rights should be lost.

So, with regards to trademarks at least, it's not a case of the law allowing something. It's a case of the law requiring something. Unless we want to abandon the trademark, of course, but that's not in the best interests of the company and its stakeholders. Hence the need to do these things.

Oh, and thanks for taking the time to read all the way through.


----------



## lonewolfdevel

JohnRTroy said:


> I think the key thing is a competing product can't TITLE itself Army Builder, you might be able to say "The software is used to build or create armies" in describing it, but the key thing would be the title--because even if you give your software away for free this may count as trade.  At least that's how I interpret the law, and others appear to agree with me.   Anybody creating a free tool IMO would need to make sure they don't use the Trademark in the Title.




According to our IP attorney, neither the title nor the description of a competing tool can utilize our trademark. However, that's in a literal sense only. So a competitor could readily say "The software is used to build or create armies" to describe the tool, just as you proposed. But they could not say "XYZ Tool is an army builder" or "XYZ Tool is army building software". Both of those uses would be construed as potentially causing brand confusion and therefore be a problem.


----------



## Xyxox

lonewolfdevel said:


> 1. The term was not in general use before we began using it. This fact has been confirmed by other posters here already.




I've been using the term since 1985 to describe my spreadsheets originally used with the first edition of Battlesystem and I refuse to stop calling my army builder spreadsheets what they are.


----------



## Xyxox

lonewolfdevel said:


> According to our IP attorney, neither the title nor the description of a competing tool can utilize our trademark. However, that's in a literal sense only. So a competitor could readily say "The software is used to build or create armies" to describe the tool, just as you proposed. But they could not say "XYZ Tool is an army builder" or "XYZ Tool is army building software". Both of those uses would be construed as potentially causing brand confusion and therefore be a problem.




If Lone Wolf Development ever took a company to court over it, I'd bet on the defendants.


----------



## Perram

lonewolfdevel said:


> According to our IP attorney, neither the title nor the description of a competing tool can utilize our trademark. However, that's in a literal sense only. So a competitor could readily say "The software is used to build or create armies" to describe the tool, just as you proposed. But they could not say "XYZ Tool is an army builder" or "XYZ Tool is army building software". Both of those uses would be construed as potentially causing brand confusion and therefore be a problem.




While I completely disagree with your point that it is NOT descriptive, would someone explain to me how your trade mark for "Army Builder" extends to "army building?"

And while your Trade Mark may be incontestable on the grounds that it is descriptive, that does not prevent fair use of a descriptive trade mark, as referenced earlier in this thread.

You are over reaching here.


----------



## lonewolfdevel

Xyxox said:


> I've been using the term since 1985 to describe my spreadsheets originally used with the first edition of Battlesystem and I refuse to stop calling my army builder spreadsheets what they are.




Are you actively promoting your spreadsheets to the public at large as a competing solution to our product? From everything you've described above and in previous posts, that's not even remotely the case. That's the only context under which this could become even worthy of discussion. 

So, by all means, keep calling them whatever you want.


----------



## lonewolfdevel

Perram said:


> While I completely disagree with your point that it is NOT descriptive, would someone explain to me how your trade mark for "Army Builder" extends to "army building?"




The rules for trademarks extend to usage that is similar or derivative in nature. The ultimate question is whether a use could be potentially confusing to the consumer. Based on this, using the term "army building" would generally be viewed as meeting that requirement vis-a-vis the "Army Builder" trademark. 

This is how I understand things work from our attorney. You are welcome to a different opinion.



Perram said:


> And while your Trade Mark may be incontestable on the grounds that it is descriptive, that does not prevent fair use of a descriptive trade mark, as referenced earlier in this thread.
> 
> You are over reaching here.




Now I'm confused. Your argument hinges on the fact that the trademark be declared as descriptive for it to be valid. However, the USPTO has officially accepted that the Army Builder mark is *not* descriptive. So this appears both circular and conflicting to me. What am I missing here?


----------



## Xyxox

lonewolfdevel said:


> Are you actively promoting your spreadsheets to the public at large as a competing solution to our product? From everything you've described above and in previous posts, that's not even remotely the case. That's the only context under which this could become even worthy of discussion.
> 
> So, by all means, keep calling them whatever you want.




Quite frankly, I had been nearly cnvinced to give up my army builder spreadsheets in favor of the software you produce until this recent event and I discovered the troubles your company had with credit cards and hackers via another forum.

So I'm sticking to my army builder spread sheets, though I may offer them for free via a yahoo group.


----------



## Perram

lonewolfdevel said:


> Now I'm confused. Your argument hinges on the fact that the trademark be declared as descriptive for it to be valid. However, the USPTO has officially accepted that the Army Builder mark is *not* descriptive. So this appears both circular and conflicting to me. What am I missing here?




Alright, Looking at your Word Mark, I don't see anything from the USPTO that says they made any ruling on whether or not your mark is descriptive.  And since its been around for 5 years, it can not be ATTACKED simply for being descriptive.  Meaning that your mark can not be invalidated (taken away) because it was simply descriptive.

(Referencing This Post)

However, that doesn't mean that it isn't descriptive.  

You build armies with army building software, and Army Builder is such software.  This thread has found previous references before your software to building armies, the exact phrase 'Army Builder' is the part that wasn't found in the archives.

And as a descriptive mark, there are fair use laws that allow its use as a description.  (See this post specifically the link.)  Such use does not constitute infringement.


----------



## pawsplay

lonewolfdevel said:


> According to our IP attorney, neither the title nor the description of a competing tool can utilize our trademark. However, that's in a literal sense only. So a competitor could readily say "The software is used to build or create armies" to describe the tool, just as you proposed. But they could not say "XYZ Tool is an army builder" or "XYZ Tool is army building software". Both of those uses would be construed as potentially causing brand confusion and therefore be a problem.




See this? This is why you are not on my popular list.


----------



## pawsplay

JohnRTroy said:


> I'm not sure Army Builder can fall under that, specifically because there are many synonyms that can be used.




There always synonyms that _can_ be used. I can call something an air suction floor cleaner, or a zoomeroo, but guess what? No one does. We call it a vacuum cleaner. Hoover had a case because people were already calling the things electric carpet sweepers, vacuum cleaners, electric suction devices, and so forth. 

But Army Builder? Look on the web site and see if you can find a place where Army Builder it is a ___. It is described as a "tool" and it is used for "army construction" according to the website. Somehow, I don't think "army tool" is sufficiently descriptive, and "army constructor" is an odd neologism. "Army construction tool" is, I'm going to say, a burdensome phrase. "Army list calculator" is the closet thing I can find to a useful synonym, and that doesn't convey the idea that it stores data used in the calculations.

Army Builder is an army builder.


----------



## guivre

I've read most of the back and forth. It's a trademark that shouldn't have been granted. It's descriptive, generic, and weak. It is and was a common term regardless of whether you can Google it. I've been using it for well over 20 years, as have been many I've encountered playing wargames. 

Trademarks *should* be used to try to differentiate yourself and get a brand name out there, not to snatch up something generic to try and capitalize on it.

Unlike many here I don't care how they went about defending it, though it was ham-handed, it shouldn't be a trademarkable phrase to begin with.

It doesn't really matter. I won't stop using the term. I doubt others will either and I'll encourage them to every chance I get. I'll consider it my tiny contribution to ensuring the phrase is genericized. 

If I decide to create an army builder you can bet I'll name it Guivre's Army Builder or something similar and invite Lone Wolf to sue me.


----------



## falcarrion

Here is an actual arrest made on trademark infrigment that happen in Chicago on Feb 4.

Police arrest 4 and seize counterfeit trademark goods
February 4, 2010 8:46 PM | No Comments 
Counterfeit designer-label items were seized and four people arrested when authorities served a search warrant on the North Side, Chicago police said today.

The search Wednesday afternoon at the business in the 4500 block of North Clark Street turned up "a large quantity" of reproduction consumer goods such as Coach handbags and Chanel sunglasses, police said.

Officers from a Town Hall District tactical team also found various mock designer labels and tools used for attaching the labels to merchandise.

Police said four people were arrested.

Chae W. Kim, 67, and Sun Kim, 62, both of Glenview, were charged with one felony count each of Unauthorized Use of Trademarks -- More Than 500 Items. The other two people, whose names were not released, were charged with one misdemeanor each of Unauthorized Use of Trademark, police said.

The Kims had been scheduled for bond hearings today but court information was not available.


----------



## lonewolfdevel

This thread seems to have reached the point where what remains is a clash of opinions. Everyone is entitled to their own opinion, and it's unlikely anyone is going to change theirs at this point. So I'm going to step out and allow those who remain interested to continue the discussion.

Please understand that I don't make the rules for how trademarks work. However, a company with a trademark is obligated to abide by those rules. And so we follow the rules as outlined by our IP attorney.

Do I enjoy having to do any of this policing stuff? Not in the slightest. Would I rather be working on a cool new feature for one of our products? Absolutely. Do I have a choice in the matter? Not really, unless you expect the company to abandon the trademark, in which case the company stakeholders would be mighty upset.

Thanks for everyone's contributions to the thread and the heartfelt discussion. It's been most illuminating!


----------



## S'mon

JohnRTroy said:


> The key term I believe is "generic", as in a word that can't be replaced by a synonym.  There is no way you could trademark a single word like pencil, because there is not another good English word for pencil.




Wow, that is really misleading!  That's not what generic means at all.  A generic term is simply one that is general, common, or inclusive rather than specific, unique, or selective.  A generic mark is thus one incapable of distinguishing the origin of goods/services as coming from a particular company.

People have criticised me, erroneously as far as I can tell, for talking about US TM law when I mostly teach UK & EU law.  There are fine points about the approach of the US courts where I could certainly learn more. But there are repeated statements by others here that are just clearly wrong.


----------



## S'mon

lonewolfdevel said:


> 3. The trademark has acquired secondary meaning after all these years. When someone posts to a miniatures forum that they need an "army builder data file", virtually everyone on that forum knows that what is being sought is a data file for Lone Wolf Development's product.




Hi lonewolf - I guess if I was your IP lawyer and arguing it in court I'd make the arguments he makes.  From my POV (not being a US attorney, but teaching TM law, and giving my academic perspective) I don't think there's any question that it's a descriptive mark (like 'Sweet'n'low for sweetener) rather than a merely suggestive mark (like 'Timberland' for boots, 'Playboy' for adult magazines), the software as I understand it helps people build/create their virtual army rosters.  Even 'Dungeons & Dragons' is a somewhat descriptive mark since the game normally involves both dungeons and dragons, but it's only weakly descriptive, edging into merely suggestive.  Your mark looks much further down towards the descriptive end since it directly describes what the product does.

But I think there's a reasonable case that your mark has acquired distinctiveness through use, your point #3 above.  It's arguable, anyway.     

Obviously the finding in _Welles_ did not depend on the Playboy mark being generic, it's a valid mark, she was using the term descriptively to refer to the title which Playboy magazine had awarded her, and that's a fair use (it also touches on nominative use, ie referring to the actual product Playboy magazine by its own name).

I got your email, I'm happy to talk with talk with your attorney if he wants to email me and I'll contact him if there's something I want to ask him. 

BTW when we're teaching our students, we teach them how to present a client's case with the best arguments available, but we also teach them to consider what arguments the other side would raise, and not to hide those from the client, because they don't want the client rushing off to court thinking he has a cast-iron case.  Our UK students are fine with this, but I've noticed that many foreign students are very reluctant to tell the (virtual) client something they think he doesn't want to hear.  So I hope your lawyer has given you both sides of the argument.  You may be wise not to want to discuss it on a public forum though!

Edit:  I was thinking of emailing your attorney to see if he supported your earlier statement which appeared to say that descriptive use of a mark could infringe, but I was going through a bunch of US TM law cases* yesterday for my TMs-on-the-Internet LLM tutorial and it became very clear to me that descriptive use is still non-infringing in the US, so I'm taking it that he didn't say that.

*Wow, Playboy sure like to litigate!


----------



## S'mon

lonewolfdevel said:


> This is generally true and, with most types of property, the owner can elect when to enforce its rights and when not to. Unfortunately, the rules for trademarks are very clear, and there is no selectivity afforded to the rights owner. If you have a trademark, you must police it equally with everyone. So there is no option to enforce it against Company X but allow it to slide with Fan Y.




You can't police it in regards to Fan Y at all, if Fan Y is making non-commercial use of the mark.  Which is what being a Fan would seem to imply.  This is the source of your PR disaster; you appeared to indicate you were trying to prevent non-commercial use of your mark, hence the title of this thread.


----------



## S'mon

lonewolfdevel said:


> According to our IP attorney, neither the title nor the description of a competing tool can utilize our trademark. However, that's in a literal sense only. So a competitor could readily say "The software is used to build or create armies" to describe the tool, just as you proposed. But they could not say "XYZ Tool is an army builder" or "XYZ Tool is army building software". Both of those uses would be construed as potentially causing brand confusion and therefore be a problem.




I'll email about this point & take it off-list.


----------



## S'mon

lonewolfdevel said:


> The rules for trademarks extend to usage that is similar or derivative in nature. The ultimate question is whether a use could be potentially confusing to the consumer. Based on this, using the term "army building" would generally be viewed as meeting that requirement vis-a-vis the "Army Builder" trademark.




That's right - a similar mark for identical or similar goods/services can infringe, if you can show a likelihood of customer confusion.  In the UK this falls under section 10(2) of the 1994 Trade Marks Act.


----------



## S'mon

lonewolfdevel said:


> However, the USPTO has officially accepted that the Army Builder mark is *not* descriptive.




No they haven't.


----------



## Perram

lonewolfdevel said:


> This thread seems to have reached the point where what remains is a clash of opinions. Everyone is entitled to their own opinion, and it's unlikely anyone is going to change theirs at this point. So I'm going to step out and allow those who remain interested to continue the discussion.
> 
> Please understand that I don't make the rules for how trademarks work. However, a company with a trademark is obligated to abide by those rules. And so we follow the rules as outlined by our IP attorney.
> 
> Do I enjoy having to do any of this policing stuff? Not in the slightest. Would I rather be working on a cool new feature for one of our products? Absolutely. Do I have a choice in the matter? Not really, unless you expect the company to abandon the trademark, in which case the company stakeholders would be mighty upset.
> 
> Thanks for everyone's contributions to the thread and the heartfelt discussion. It's been most illuminating!




Well here is a question I have for you:

What do you want?  What made you decide to take this path?  You keep telling us what you don't want to do, but not what you want to do.  You could have simply gone after 'Jim's Army Builder' if you wanted to show that you defend your patent.  You could have let your lawyer do his thing and actually send out C&D letters to actual solid cases of infringement.


----------



## JohnRTroy

pawsplay said:


> But Army Builder? Look on the web site and see if you can find a place where Army Builder it is a ___. It is described as a "tool" and it is used for "army construction" according to the website. Somehow, I don't think "army tool" is sufficiently descriptive, and "army constructor" is an odd neologism. "Army construction tool" is, I'm going to say, a burdensome phrase. "Army list calculator" is the closet thing I can find to a useful synonym, and that doesn't convey the idea that it stores data used in the calculations.




You missed Army Maker.  In short, I'd agree with you if it would clearly make it hard to communicate what a product does, but army constructor doesn't feel like a neologism, it's definitely not what I would call and awkward euphemism.  We'll just have to agree to disagree on this.



			
				guivre said:
			
		

> It doesn't really matter. I won't stop using the term. I doubt others will either and I'll encourage them to every chance I get. I'll consider it my tiny contribution to ensuring the phrase is genericized.
> 
> If I decide to create an army builder you can bet I'll name it Guivre's Army Builder or something similar and invite Lone Wolf to sue me.




This, I believe, would not contribute to so-called generizide.  As long as Lone Wolf is educating people, even if you disagree with the fact that it's a trademark, by posting your opinion her in this forum you recognize it as a trademark.  The existence of this very thread means more people are becoming aware.  I may be wrong about this, but having "contempt" for a trademark is not the same as not recognizing a trademark.  I don't think a judge or jury would be sympathetic to someone actually trying to make a trademark generic.  

(People should never assume these posts would ever be ignored by a lawsuit.  When I looked into the WoTC lawsuits, I noticed at least one defendant's post was used in the complaint on a message board.)



			
				S'mon said:
			
		

> Wow, that is really misleading! That's not what generic means at all. A generic term is simply one that is general, common, or inclusive rather than specific, unique, or selective. A generic mark is thus one incapable of distinguishing the origin of goods/services as coming from a particular company.




Understood.  I'll gladly admit to being wrong about that.  

It may not have legal value, but my own judgements come if a descriptive trademark is good or bad comes from how easilly you can use another term to describe something.  But then again, that's not a legal opinion.



			
				falcarrion said:
			
		

> Here is an actual arrest made on trademark infrigment that happen in Chicago on Feb 4.




People need to know that serious Trademark violations like that do have severe consequences.  Passing off your goods as somebody else's is akin to Identity Theft.

There was a family that owned a Kentucky Fried Chicken franchise and had three restaurants in the surrounding towns around here.  At some point, there was some dispute between the family and KFC, and they lost the rights to KFC.  The family continued to operate as KFC for over a year.  Finally, US Marshalls had to come in and seize all the stuff that indicated the KFC trademark or franchise--signs, any products with the trademarked logos, etc.  



			
				S'Mon said:
			
		

> *Wow, Playboy sure like to litigate!




Well, I believe in part Playboy wants to prevent their trademark from becoming a generic term for nude cheescake magazines or porn, which it was in danger of, at least back when there were fewer of those types of magazines.  So I can understand why they take those steps.


----------



## guivre

JohnRTroy said:


> This, I believe, would not contribute to so-called generizide.  As long as Lone Wolf is educating people, even if you disagree with the fact that it's a trademark, by posting your opinion her in this forum you recognize it as a trademark.  The existence of this very thread means more people are becoming aware.  I may be wrong about this, but having "contempt" for a trademark is not the same as not recognizing a trademark.




Your belief is incorrect. A trademark making it's way into common usage is precisely something that will cause it to be cancelled. Here is a list of examples: List of generic and genericized trademarks - Wikipedia, the free encyclopedia

In this case the phrase already is common usage and has been for a long time completely independent of this product.



> I don't think a judge or jury would be sympathetic to someone actually trying to make a trademark generic.
> 
> (People should never assume these posts would ever be ignored by a lawsuit.  When I looked into the WoTC lawsuits, I noticed at least one defendant's post was used in the complaint on a message board.)




I guess we'll see if I care enough to make my own army builder out of principle...and they have the bad sense to attempt a lawsuit over it.


----------



## JohnRTroy

> Your belief is incorrect. A trademark making it's way into common usage is precisely something that will cause it to be cancelled. Here is a list of examples: List of generic and genericized trademarks - Wikipedia, the free encyclopedia




The Wikipedia article is a little misleading.  First of all, a lot of the trademarks referenced in those cases were established ages ago, and in some cases due to other factors--aspirin for instance was made generic because of War Reperations against Germany after World War I, and it's still a trademark in many European countries.

The key test would probably be, in the US, Section 1209 of the TMEP.  There are several examples there, including ones of generic (as opposed to descriptive marks).  Based on what I've read--I'm not sure Army Builder counts as generic.  There's a small subsection on generic case references.

I'm also not sure what test they use for generic or descriptive marks.  Does it depend on the audience?  If so, if only hardcore gamers use the term army builder (as opposed to the general public with thermos and yo-yo), if that small audience would be enough to prove a trademark generic.

I think the key thing in my mind is this--why is this suddenly being brought up now?  The people who've built it have used this term for 1998, and got registration in 2004.  That has given plenty of people time to challenge the trademark, and I'm pretty sure LWP did their due diligence, and it doesn't look like there's a lot of competition in the industry anyway for this tool, and I believe the representative when he said they have acted before on these violations.  I feel if this was a serious issue the gaming community would have heard about it by now and protested earlier.  I don't buy the argument that they "snuck this under the radar".


----------



## pawsplay

JohnRTroy said:


> You missed Army Maker.  In short, I'd agree with you if it would clearly make it hard to communicate what a product does, but army constructor doesn't feel like a neologism, it's definitely not what I would call and awkward euphemism.  We'll just have to agree to disagree on this.




"Army maker" is not something I've seen used generically, but it is the name of a Warhammer 40K web-based utility. So I disagree that army maker is an acceptable generic term; it is neither used generically nor is it, it appears, generic.


----------



## S'mon

JohnRTroy said:


> I'm also not sure what test they use for generic or descriptive marks.  Does it depend on the audience?  If so, if only hardcore gamers use the term army builder (as opposed to the general public with thermos and yo-yo), if that small audience would be enough to prove a trademark generic.




The gamers are the relevant market for the product, so yes it matters how they use the term.  UK law is more rightsholder-friendly here - in the UK it would not matter that the market used the term generically, as long as rival suppliers did not do so.  Plus the term has to be capable of being distinctive in the first place - "butter" for instance is not a distinctive mark if the product is butter.


----------



## pawsplay

S'mon said:


> The gamers are the relevant market for the product, so yes it matters how they use the term.  UK law is more rightsholder-friendly here - in the UK it would not matter that the market used the term generically, as long as rival suppliers did not do so.  Plus the term has to be capable of being distinctive in the first place - "butter" for instance is not a distinctive mark if the product is butter.




Well, that could always call it "dairy fat coagulation."


----------



## nexgen

*Absolute Absurdity*

Self-aggrandizement aside, LoneWolf, I'm a U.S. Attorney and MBA, so listen up. I'm not giving you legal advice (although I have a fairly strong opinion as to the strength of your claims); I'm merely offering you friendly advice: Back Off!

My clients protect their IP to protect the commercial viability of both their products and their goodwill. By attacking posts on company forums for references to armies and builders, you probably reduced the strength of your mark by reducing your image. From a corporate standpoint, you shot yourself in the foot and by backpeddling around this thread, you look downright comedic. (And stop thanking people for reading your posts. They're likely only doing so to find more ammo.)

The real aim of this thread should be to give a nod to PRIVATEER. They had a right to challenge the claim. Instead, they avoided looking equally ratty by simply removing all blunt references to your "trademark". In the end, PRIVATEER wins (and so do their stakeholders) and you lose. Good job.


----------



## JohnRTroy

As far as trademarks becoming generic, while there are some examples of where they successfully became generic, in many cases the conversion of them to a verb does not necessarily negate the trademark, if this particular list comes into play:

List of generic and genericized trademarks - Wikipedia, the free encyclopedia


----------



## AngelDeath82

Just posted this onto their forum after their post about this:



> I think perhaps the biggest problem with sending any form of "Cease and Desist" type of mailing (be it formal or not) regarding this particular trademark is that you began by registering a trademark on a far too generic phrase to begin with.  Yes, it makes it easy to remember, but because you used a name of such generic construction to begin with, you never should have been granted the trademark for it in the first place to be perfectly honest.
> This really does seem like a issue revolving around common sense (which unfortunately, is not remotely common these days).




Hard to say how long it will actually stay up though :S


----------



## Infiniti2000

S'mon said:
			
		

> Infiniti2000, when asked to provide legal support for his claim



Nice.  Ask a random internet guy to cite case law, and then call him out when he doesn't?  Are you for real?  Still, I'd feel better about it if you quote it in context, especially the fact that you provided incorrect advice/opinion.  Specifically, your post #336 point #2.



			
				S'mon said:
			
		

> "Prosecute" is a term in criminal law. You mean "sue"?



It's perfectly legitimate with regards to any court of law from my understanding. Really, though, this is bad form to try and correct someone on language usage on the internet unless it grossly perturbs the meaning of a statement.

Prosecute - Definition and More from the Free Merriam-Webster Dictionary



			
				S'mon said:
			
		

> You do accept that the respondent/defendant making commercial use of the mark is a prerequisite for a finding of TM infringement under the Lanham Act, don't you?



Quote me again, when I say "That would only be decided in a court of law."  The plaintiff's (correct word?) attorney is the one that needs to justify the TM infringement.  Not me, not the defendant.  And, the court system (judge, jury, etc.) would be the ones to decide the application of law.  Steerpike7, who apparently _is_ a lawyer, already corrected you on this and you conceded so why belabor the point with an average Joe?



			
				S'mon said:
			
		

> That is not helpful to me, and it wouldn't get you far in a court of law, either.



Exactly right and you seem to have forgotten that this isn't a court of law.  So, have your opinions, but that's all they are, and no better than mine in a court of law.


----------



## Remus Lupin

Well, there are opinions, and then there are informed opinions. One category strikes me as having more validity.


----------



## S'mon

Infiniti2000 said:


> Exactly right and you seem to have forgotten that this isn't a court of law.  So, have your opinions, but that's all they are, and no better than mine in a court of law.




Mine are clearly a lot better than yours, Joe.

Please see my warning below. ~ PCat


----------



## thzero

Know it was a few pages back, but someone mentioned that it was hosted in the UK, er...  well here is the trace route:


Tracing route to www.enworld.org [68.68.204.19]
over a maximum of 30 hops:

  1    <1 ms    <1 ms    <1 ms  192.168.1.1 
  2     *        *        *     Request timed out.
  3     2 ms     1 ms     2 ms  h69-11-216-193.vnhlil.dedicated.static.tds.net [69.11.216.193] 
  4     5 ms     4 ms     4 ms  vnhliledg05-lo0.network.tds.net [216.170.247.1] 
  5     6 ms     6 ms     5 ms  slkmwahed01-pool02-a251.slkmwa.tds.net [69.129.242.251] 
  6    20 ms     9 ms     9 ms  mdsnwigjdst52.network.tds.net [64.50.227.65] 
  7    39 ms    39 ms    39 ms  asbnvabrd01-gi0-3.network.tds.net [64.50.237.38] 
  8    43 ms    40 ms    40 ms  xo-tds-asbnva.peering.tds.net [64.50.235.246] 
  9    43 ms    45 ms    43 ms  vb2000d1.rar3.washington-dc.us.xo.net [207.88.13.62] 
 10    69 ms    69 ms    68 ms  te-3-0-0.rar3.atlanta-ga.us.xo.net [207.88.12.9] 
 11    80 ms    75 ms    70 ms  te-4-0-0.rar3.miami-fl.us.xo.net [207.88.12.6] 
 12    72 ms    73 ms    75 ms  207.88.14.58.ptr.us.xo.net [207.88.14.58] 
 13    82 ms    80 ms    81 ms  w026.z207088246.xo.cnc.net [207.88.246.26] 
 14    74 ms    71 ms    70 ms  border5.pc2.bbnet2.mia003.pnap.net [69.25.0.77] 
 15    70 ms    69 ms    70 ms  fplfibernet-8.border5.mia003.pnap.net [64.94.60.30] 
 16    96 ms    87 ms    72 ms  208.67.164.34 
 17    72 ms    86 ms    74 ms  208.67.164.145 
 18    88 ms    74 ms    82 ms  208.67.166.125 
 19    80 ms    80 ms    81 ms  208.67.164.86 
 20    71 ms    72 ms    72 ms  ftmy-core-sw1-vl2.t3com.net [63.247.144.10] 
 21    70 ms    70 ms    71 ms  ftmy-ip-colo-01-g03.t3com.net [63.247.144.54] 
 22    73 ms    72 ms    73 ms  68-68-201-198-static.t3com.net [68.68.201.198] 
 23    83 ms    83 ms    82 ms  guest19.cyberstreet.com [68.68.204.19] 

Trace complete.

68.68.204.19 is at T3COM.  Cape Coral, FL.   There are 7 domains registered:

rpgblogs.org
gamersseekinggamers.com (this sounds like a personals!)
dungeonsanddragonsnews.com
www.circvsmaximvs.com
shop.enworld.org
enworld.cyberstreet.com
EN World D&D / RPG News: The world's premier fan community for Dungeons & Dragons news and more!

68.68.204.19
ARIN: WHOIS Database Search
ARIN: WHOIS Database Search


----------



## Piratecat

*S'mon, now seems like a good time for you to take a break from this thread for a few days. I'm not formally threadbanning you, but you (and a few other people) are clearly angry enough to be losing your tempers. That's a great sign to walk away from the keyboard for a bit.

Opinions are fine, folks. Personal attacks aren't. *


----------



## S'mon

Piratecat said:


> *S'mon, now seems like a good time for you to take a break from this thread for a few days. I'm not formally threadbanning you, but you (and a few other people) are clearly angry enough to be losing your tempers. That's a great sign to walk away from the keyboard for a bit.
> *



*

Thanks PC.    Actually can you make it that I can't see this thread anymore?  That would remove any temptation!*


----------



## JohnRTroy

S'mon said:


> Thanks PC.    Actually can you make it that I can't see this thread anymore?  That would remove any temptation!




There's an ignore thread option in the menu under "thread options"--the menu next to the Twitter and Digg links.


----------



## jdrakeh

thzero said:


> Know it was a few pages back, but someone mentioned that it was hosted in the UK, er...  well here is the trace route:




The site is not _hosted_ in the UK, but the owner lives in the UK. BTW, what was the purpose of posting all of that WhoIs information?


----------



## Relique du Madde

jdrakeh said:


> The site is not _hosted_ in the UK, but the owner lives in the UK. BTW, what was the purpose of posting all of that WhoIs information?




I suspect he was trolling considering that that info is public domain and is available to anyone by doing a simple google search.  OR he wanted to find himself mentioned in certain off site threads.


----------



## Tewligan

jdrakeh said:


> BTW, what was the purpose of posting all of that WhoIs information?



Teh drama!


----------



## jdrakeh

Tewligan said:


> Teh drama!




Now, now. Last I recall, speculating about another poster's motives is frowned upon here. That's why I asked!


----------



## jdrakeh

Relique du Madde said:


> OR he wanted to find himself mentioned in certain off site threads.




I don't think people _try_ to get mentioned in _those_ threads.


----------



## Morrus

Relique du Madde said:


> I suspect he was trolling considering that that info is public domain and is available to anyone by doing a simple google search. OR he wanted to find himself mentioned in certain off site threads.




Not only is it easy to find, I'm also more than happy to tell anyone who asks.  It's hardly a secret!


----------



## Maggan

I've tried to follow the thread, but it's a daunting task. So apologies if this has been covered.

Apparently, several board owners are complying with Lone Wolf's request by using word filter functions to change the forbidden term into something else which is not forbidden.

An elegant solution for everyone involved, since it means that the board owners won't have to police all posts and moderate heavily to comply. It's all automatic!

/M


----------



## thzero

Decided it wasn't worth responding.


----------



## thzero

I believe (and I'm sure to be corrected if I'm wrong) the thread boils down to LoneWolf has a registered trademark on "Army Builder" (R) so using it in a product name (book, software, whatever) would violate that trademark.  However, while using "army builder" as a general phrase is improper, it is not forbidden.  So I'm not really sure this is an "elegant" solution; if a board owner is going to do it for one trademark, he should really do it for many which would be problematic.  



Maggan said:


> Apparently, several board owners are complying with Lone Wolf's request by using word filter functions to change the forbidden term into something else which is not forbidden.
> 
> An elegant solution for everyone involved, since it means that the board owners won't have to police all posts and moderate heavily to comply. It's all automatic!


----------



## Quantum

Bullies take all forms and styles. Some just like to use the law to brow beat people into submission.


----------



## Marius Delphus

And some people who are not bullies, but who have read and understand the law pertaining to their property, take certain actions which *seem* like bullying to some observers because they are obligated to take said actions when they wish to protect said property. And some of *those* people commit errors when writing for which they apologize and try to make amends.


----------



## Mark Chance

How about a collection of short stories titled _"Arm Me, Builder."_? These are the recurring adventures of a knight and his construction worker squire.


----------



## Oldtimer

Maggan said:


> An elegant solution for everyone involved, since it means that the board owners won't have to police all posts and moderate heavily to comply. It's all automatic!



And just why should a forum owner comply with such unreasonable and insane demands?


----------



## Oldtimer

Marius Delphus said:


> And some people who are not bullies, but who have read and understand the law pertaining to their property, take certain actions which *seem* like bullying to some observers because they are obligated to take said actions when they wish to protect said property. And some of *those* people commit errors when writing for which they apologize and try to make amends.



Have you really understood the problem here? Going after other companies using your trademark is one thing. Going after forum owners because posters are using a common and desciptive term is just bullying. Pure and simple.

And it's not about property. It's about intellectual property. Despite its name it hasn't much to do with actual property.


----------



## Marius Delphus

As I read it, nobody "went after" anybody. As they've asked other organizations in the past, to protect their trademark, Lone Wolf asked Privateer, in what turned out this time to be poorly-worded letter, to please police infringing uses of "Army Builder" as a trademark and to please educate, or allow Lone Wolf to educate, forum posters about the trademark's existence. The strident tone and confusion between the words "improper" and "infringing" have since been apologized for.

Intellectual property *is* property, in the following respect: the owner of a trademark, copyright, or patent has, in the words of Wikipedia, "the right to consume, sell, rent, mortgage, transfer, exchange, or destroy [the] property, and/or to exclude others from doing these things" (in this case, that'd be "and").


----------



## Maggan

Oldtimer said:


> And just why should a forum owner comply with such unreasonable and insane demands?




To avoid needless stress obtained by receiving a C&D.

Sure, Lone Wolf might be in the wrong, but if I was running a forum just for fun and as a hobby, I'd just filter the word instead of risking the wrath of lawyers.

Let's say that all forums agreed to filter "Army Builder" and replace it with "Army Creator". The net effect would be to quickly transfer the common usage from the previous term to the latter.

Thereby granting Lone Wolf what they are asking for, albeit not what they are hoping for.

/M


----------



## Maggan

Marius Delphus said:


> Lone Wolf asked Privateer




And a lot of small hobby forum owners. This was not only a thing between two companies, it was a company against fandom as well.

I respect that Lone Wolf needs to make sure that competing products do not challenge the "Army Builder" trademark, but I find it preposterous that they want/wanted to charge forum owners with the responsibility of stopping "improper" use among the posters of the forums.

Still if I got a C&D I'd comply. Not worth the hassle, and it's easy enough to just strike the term from a site using a word filter.

/M


----------



## Marius Delphus

Maggan said:


> This was not only a thing between two companies, it was a company against fandom as well.



If by "fandom" you mean "people who create and make available products named 'Army Builder'," then yes. But publishers and distributors of products must name their products, and so they start wandering into the trademark minefield (for better or worse).



Maggan said:


> I find it preposterous that they want/wanted to charge forum owners with the responsibility of stopping "improper" use among the posters of the forums.



As I understand the clarification, the intent of the letter was not to charge Privateer with this responsibility. The intent was to (1) stop "infringing" uses and (2) educate forum posters about the existence of the trademark (so that hopefully fewer of them will use it in an "improper" manner).


----------



## Maggan

Marius Delphus said:


> The intent was to (1) stop "infringing" uses and (2) educate forum posters about the existence of the trademark (so that hopefully fewer of them will use it in an "improper" manner).




Well, the silver lining for Lone Wolf is that they in all probability reached their intended goals.

Whether the other results of this debacle will influence their bottom line will only be known to them in the end.

/M


----------



## Quantum

As for me I'm never going to buy it or use it ever and will have a personal boycott for their heavy handedness in this matter. It seems lawyers know nothing but bullying people into submission in to getting what they want, and the only thing they want is the money. That's all it's really about, really, is that it's all about the money. All your moneys are belonging to us! THERE CAN BE ONLY ONE OWNER OF ALL THE MONEY!

It must be nice to have all that kind of power to bully and brow beat people into submission.


----------



## Morrus

Quantum said:


> As for me I'm never going to buy it or use it ever and will have a personal boycott for their heavy handedness in this matter. It seems lawyers know nothing but bullying people into submission in to getting what they want, and the only thing they want is the money. That's all it's really about, really, is that it's all about the money. All your moneys are belonging to us! THERE CAN BE ONLY ONE OWNER OF ALL THE MONEY!
> 
> It must be nice to have all that kind of power to bully and brow beat people into submission.




There are a lot of criticisms one can level at companies, but "making money" is not one of them.   They exist to make money.


----------



## Remus Lupin

See, I'd say they exist to make good, useful, and beneficial products. "Making money" is the means to this end. It's necessary, but it's not why they exist.


----------



## Marius Delphus

Remus Lupin said:


> See, I'd say they exist to make good, useful, and beneficial products. "Making money" is the means to this end. It's necessary, but it's not why they exist.



Other way round, surely. I would have to say making products is the means and money is the end. I would also argue that there are companies out there that make no products but still turn a profit.


----------



## Remus Lupin

Marius Delphus said:


> Other way round, surely. I would have to say making products is the means and money is the end.




I know, a lot of people see it that way. But how would our approach to business change if we flipped it to the way I put it. Then we'd put a premium on making good products, first and foremost, with the money being the way we go about pursuing that goal.

Mind you, you need both good products (ideally) and profit either way, but by putting the product first, you shift the understanding of what you're doing in a fundamental way*

*I don't claim credit for this idea, which I think was originally published in an issue of the Harvard Business Review. I'm just embracing it!


----------



## Xyxox

Remus Lupin said:


> See, I'd say they exist to make good, useful, and beneficial products. "Making money" is the means to this end. It's necessary, but it's not why they exist.




Nope, the function of any incroporated entity is to profit. Making good and useful products is the means to the end of turning a profit.

This end is altered slightly for publicly traded companies. The entire reasong for the existence of a publicly traded company is to insure shareholders profit. As above, there are many means to this end, one of which may be producing good and useful products.

Any incorporated entity which fials to keep the eye on the ball (i.e. fails to put profit above all else) will fail.


----------



## Xyxox

Remus Lupin said:


> I know, a lot of people see it that way. But how would our approach to business change if we flipped it to the way I put it.




Any business flipping it about is doomed to failure.


----------



## Fifth Element

Xyxox said:


> Nope, the function of any incroporated entity is to profit.



Quibble: not-for-profit entities can be incorporated. Maybe not in all jurisdictions, but you're overgeneralizing.


----------



## Fifth Element

Xyxox said:


> Any business flipping it about is doomed to failure.



Not quite doomed, surely, but it does strike me as a "feel good" idea, with some little connection to reality.


----------



## Glade Riven

All corporation exists primarally to make money; the love of money is the root of all evil; Therefore, all corporations are inherently evil. 

Someone coming out with a software product labled something like "New Legion: an army builder" Lone Wolf would have a case against, but I have a feeling that the case would come down to how good each lawyer was at arguing the point. I know copywrite and patent law has a set percentage of difference in order to not violate the rights of the origenal holder.

Now, I know Derrivitive Works deals with fan works. Army Building as a derrivitive of the Army Builder trademark might be stretching it, depending on use. Successfully sueing over a small tagline on the box of product packaging that is using it as a descriptor - well, in that case I would hope for a really, really good lawyer to argue that point.

There is always a choice on how aggressive one pursues such an endevor. For instance, I have done several D&D based peices of artwork which is technically a derrivitive work. Hasbro can send me a C&D to stop posting the artwork. They arn't going to because a. it is not worth the time and expense and b. fan works are generally considered free advertising.

Right now, what disturbs me about Lone Wolf is that they persue a heavy-handed tactic in regards to their own trademarks, but the data sets avalable for download on their site are a violation of the trademarks of major miniature game manufacturers (Privateer Press being one of them).


----------



## pawsplay

Xyxox said:


> Nope, the function of any incroporated entity is to profit. Making good and useful products is the means to the end of turning a profit.




And what is the purpose of profit? The purpose of a corporation is to allow a collective to act as if a legal person; it may engage in actions that a person may engage in. Like a person in business, a corporation must make a profit, but profit can not be the sole guide of a business, whether personal or corporate. The means of making a profit are foundational to any business. Businesses that follow only the bottom line and fail to produce value for their society are doomed, if not by the actions of others against the business, than by the eventual downgrade of the society in which it exists. 

The purpose of profit is to enrich a society. Therefore, if the purpose of a corporation were said to be to make a profit, the purpose of corporations is ultimately to enrich society. Profit unto itself means nothing; what does it mean to be the most profitable company in a failing economy?


----------



## pawsplay

Marius Delphus said:


> Intellectual property *is* property, in the following respect: the owner of a trademark, copyright, or patent has, in the words of Wikipedia, "the right to consume, sell, rent, mortgage, transfer, exchange, or destroy [the] property, and/or to exclude others from doing these things" (in this case, that'd be "and").




Intellectual property cannot be consumed, rented, mortgaged, transfered, exchanged, or destroyed, except in the sense the franchise or license to do those things can be so affected. Intellectual property itself is intangible, immaterial, immortal, and infinite. IP can be created with a legislative act, or vanish just as easily, without anything being destroyed, transferred or altered. IP is a prerogative created by law; it is not property in any sense except as an analogy.


----------



## Dire Bare

Remus Lupin said:


> See, I'd say they exist to make good, useful, and beneficial products. "Making money" is the means to this end. It's necessary, but it's not why they exist.






pawsplay said:


> The purpose of profit is to enrich a society. Therefore, if the purpose of a corporation were said to be to make a profit, the purpose of corporations is ultimately to enrich society. Profit unto itself means nothing; what does it mean to be the most profitable company in a failing economy?




The world you two live in sounds really nice!  I'd love to visit!


----------



## Remus Lupin

Xyxox said:


> Nope, the function of any incroporated entity is to profit. Making good and useful products is the means to the end of turning a profit.
> 
> This end is altered slightly for publicly traded companies. The entire reasong for the existence of a publicly traded company is to insure shareholders profit. As above, there are many means to this end, one of which may be producing good and useful products.
> 
> Any incorporated entity which fials to keep the eye on the ball (i.e. fails to put profit above all else) will fail.




1. Not all businesses are incorporated.

2. Not all corporations are for-profit.

3. Not all for-profit corporations are publicly traded.

Incorporation doesn't require that you put profit first, above the obligation to make a good product. It's unfortunate that this ideology has infected so much thinking about corporations in this country.


----------



## Remus Lupin

Xyxox said:


> Any business flipping it about is doomed to failure.




I disagree. I'm not saying a busness doesn't need to make a profit. It does. It just doesn't need to say that the profit is the primary function of the business, above making a good product. I'd venture to say that a lot of gamers who go into the gaming business do it first and foremost because they want to share a cool product with the world. To do so. they need to make a profit, or they won't stay in business. But the point of going into business is to make and distribute the cool product.


----------



## Remus Lupin

Transbot9 said:


> All corporation exists primarally to make money; the love of money is the root of all evil; Therefore, all corporations are inherently evil.




I'm saying it needn't be so. All corporations don't exist primarily to make money. Many incorporated entities are not-for-profit. Incorporation gives certain legal protections and produces certain obligations, but it doesn't require, as it's raison d'etre, that one put profit-making above the making of a good product. It requires both, and I'm arguing that making a good product is the morally primary obligation.


----------



## Remus Lupin

Dire Bare said:


> The world you two live in sounds really nice!  I'd love to visit!




I've got good news for you then, you already live there. A pity so much Milton Friedman inspired cynicism exists here though (and I don't think Friedman, when being reflective, would really disagree with this).

Look, let me make this clear -- I'm not saying that a business doesn't need to turn a profit to be successful. I'm saying that, by changing the equation from "A business must make good products in order to make a profit, which is its goal," you say "a business must make a profit in order to make good products, which is its goal," you turn the attention to the quality of the product, its usefulness, and it's benefits, rather than to the profit, which can exist, as many products and companies have demonstrated, in the production of inferior, destructive, and objectionable products.


----------



## Kafen

Transbot9 said:


> There is always a choice on how aggressive one pursues such an endevor. For instance, I have done several D&D based peices of artwork which is technically a derrivitive work. Hasbro can send me a C&D to stop posting the artwork. They arn't going to because a. it is not worth the time and expense and b. fan works are generally considered free advertising.




However aggressive, the only real rule is that owners should not contact a forum admin directly. If you have a legal issue that needs resolving, the only safe way to do it generally revolves around letting your lawyer speak for you.


----------



## Glade Riven

Oh, I agree that everything pertaining to legalities such as this should be done through a lawyer, or at least ran past a lawyer before sending something that could make a company look stupid.

However, if I found out that someone, say, started posting my artwork on Enworld claiming that it was theirs, I would first contact the forum administration with an extremely polite letter voicing my concerns, either through a private message or through email. Most forums have rules against that sort of intellectual property theft, and I am capable of proving ownership by displaying a segment of the artwork at a much higher resolution. The incident would be resolved quickly, efficiantly, with nobody's feelings hurt except the violator's, as he/she ends up looking stupid.

A bit of professional politeness goes a long way, and can resolve issues outside of court.


----------



## Morrus

Remus Lupin said:


> See, I'd say they exist to make good, useful, and beneficial products. "Making money" is the means to this end. It's necessary, but it's not why they exist.




Some do, sure - but I'd argue that they're the exception rather than the rule.  In general, they're about the profits; and the products are the means to that end.  Certainly there are non-profit organisations with different goals.


----------



## Remus Lupin

Agreed, but I'd suggest even for-profit companies would benefit from this way of looking at things. But, this is far afield from where we began, so I'll let the matter drop.


----------



## pawsplay

Dire Bare said:


> The world you two live in sounds really nice!  I'd love to visit!




Yeah, reality is pretty awesome. I'm not sure what kind of fantasy world some people live in where a company can make lots of money without using up resources or extracting it from other, productive businesses.


----------



## Xyxox

Remus Lupin said:


> I disagree. I'm not saying a busness doesn't need to make a profit. It does. It just doesn't need to say that the profit is the primary function of the business, above making a good product. I'd venture to say that a lot of gamers who go into the gaming business do it first and foremost because they want to share a cool product with the world. To do so. they need to make a profit, or they won't stay in business. But the point of going into business is to make and distribute the cool product.




The business of business is to turn a profit. Everything else comes after that single goal. Failure to be mindful of that fact results in the failure of the business.


----------



## pawsplay

Xyxox said:


> The business of business is to turn a profit. Everything else comes after that single goal. Failure to be mindful of that fact results in the failure of the business.




The pursuit of profit, and only profit, by any means, is short-sighted corporate psychopathy.


----------



## Xyxox

pawsplay said:


> The pursuit of profit, and only profit, by any means, is short-sighted corporate psychopathy.




Since this discussion is off topic, I will refrain from further responses.


----------



## shieldknight01

*New Name*

I suggest we come up with a new name that works better than "army builder".

How about....

*Army Tectonics*


----------



## SwissBeatz

for discussion on the issue and follow up of the d6generation podcast's coverage and interview with lone wolf, please see the following thread:  DakkaDakka - Warhammer 40K Forums - The D6 Generation Ep 49: Tactica Trademark, Terraforming, & More!


----------



## Storm Raven

pawsplay said:


> IP is a prerogative created by law; it is not property in any sense except as an analogy.




Property is defined by law. IP is defined by law as property. Ergo, it is property in fact, not by analogy.


----------



## S'mon

Storm Raven said:


> IP is defined by law as property.




Yes in some ways, no in others.

On the bright side, I got to use this situation as a teaching example in TM class!


----------



## Storm Raven

S'mon said:


> Yes in some ways, no in others.
> 
> On the bright side, I got to use this situation as a teaching example in TM class!




Interesting. Now I have to wonder what ways you think IP is not defined as property.


----------



## coyote6

Storm Raven said:


> Interesting. Now I have to wonder what ways you think IP is not defined as property.




Do any governments tax IP?


----------



## czak

Yes countries tax income earned from patent royalties or licensing copyrights etc... There are rules for allocating the tax revenue from ip in Article 12 of the OECD's Model Tax Convention and in the UN model so I suspect nearly every country in the world except for tax havens will tax ip in some fashion.

Delicious tax treaty    OECD
[sblock]

                                          Article 12
                                       ROYALTIES
1.      Royalties arising in a Contracting State and beneficially owned by a resident of the other Contracting State shall be taxable only in that other State.


2.       The term "royalties" as used in this Article means payments of any kind received
as a consideration for the use of, or the right to use, any copyright of literary, artistic or
scientific work including cinematograph films, any patent, trade mark, design or model,
plan, secret formula or process, or for information concerning industrial, commercial or
scientific experience.
3.       The provisions of paragraph 1 shall not apply if the beneficial owner of the
royalties, being a resident of a Contracting State, carries on business in the other Con-
tracting State in which the royalties arise through a permanent establishment situated
therein and the right or property in respect of which the royalties are paid is effectively
connected with such permanent establishment. In such case the provisions of Article 7
shall apply.
4.       Where, by reason of a special relationship between the payer and the beneficial
owner or between both of them and some other person, the amount of the royalties, having regard to the use, right or information for which they are paid, exceeds the amount which would have been agreed upon by the payer and the beneficial owner in the absence of such relationship, the provisions of this Article shall apply only to the last-mentioned amount.
In such case, the excess part of the payments shall remain taxable according to the laws of each Contracting State, due regard being had to the other provisions of this Convention.

[/sblock]


----------



## Mark Chance

czak said:


> Yes countries tax income earned from patent royalties or licensing copyrights etc...




That would be an income tax, not a property tax. I pay property taxes for owning property even if that property doesn't generate income. If I use property to generate income, then the property and the income both end up taxed.

It's enough to make me wish I had an army builder to help defend my money.


----------



## czak

The question didn't specify income or property taxes, just tax in general.

Also, a property tax (in canada at least it may be different down south) only targets one type of property, freehold real property (land).  You wouldn't get taxed on your lease, or your car even though those are types of property.

If you turn off the lights and stand in front of a mirror and chant army builder three times do you get a cease and desist letter?


----------



## S'mon

Storm Raven said:


> Interesting. Now I have to wonder what ways you think IP is not defined as property.




Property doesn't have to be registered (Patents, TM, Registered Design right et al).  Property doesn't have a term after which it expires (Patents, Copyright, most other IP).  Some IPR aren't fully transferable, unlike property (TM, copyright in some jurisdictions).  While there are easements, rights of way and such with realty, property ownership in general is a much more absolute right than ownership of most IPR.


----------



## czak

You are describing the difference between real property and personal property (chattels) not the difference between property and not-property. 

The best way to think about property is as a bundle of rights and obligations not as an actual object.

What you describe for real property isn't necessarily true in all cases either: Going through your points one by one:
Property doesn't have to be registered - In some jurisdictions transfers of ownership and ownership of real property does have to be registered. This type of system is known as a Torrens System and is used in Australia, New Zealand, Alberta, and British Columbia just off the top of my head.

  Property doesn't have a term after which it expires:
Leasehold property, or life estates do have a time after which ownership expires.
Even freehold property is subject to escheat as well.

Some IPR aren't fully transferable, unlike property:
Hmm nothing off the top of my head except the corner case of aboriginal title in canada.


While there are easements, rights of way and such with realty, property ownership in general is a much more absolute right than ownership of most IPR:

In actual fact, in most common law jurisdictions real property is not owned absolutely - the state always owns the underlying title - This is known as fee simple ownership. This is what gives the state rights like taxation, escheat etc..

Also if you look at a land grant the state almost always reserves certain rights (mineral rights and oil and gas are the big ones) that they continue to own, not you.

On the other hand most personal property is owned absolutely (allodial I think is the term) - In some civil law countries the same can apply to land.


----------



## TheAuldGrump

SwissBeatz said:


> for discussion on the issue and follow up of the d6generation podcast's coverage and interview with lone wolf, please see the following thread:  DakkaDakka - Warhammer 40K Forums - The D6 Generation Ep 49: Tactica Trademark, Terraforming, & More!



Wow. I listened for about five minutes, then gave it up as 'way too annoying to listen to'. 

I think delivery got in the way of content - scaling back the gonzo D.J. vibe would make a lot of difference. There may have been some good information there, but I just could not stomach the presentation.

The Auld Grump


----------



## pawsplay

Storm Raven said:


> Interesting. Now I have to wonder what ways you think IP is not defined as property.




You can't steal it, destroy it, or use it, and it doesn't exist in scarcity. It has no intrinsic value, does not exist in many societies, and has been radically redefined several times every century in American history. 

Property is a good; IP is a franchise or a license. It's like asking, "How is a contract not property?" or "How is the authorization to use military force not property?" It's... not property. Hence, the "intellectual" part appended to the front.


----------



## pemerton

pawsplay said:


> You can't steal it, destroy it, or use it



This is true of most property in a modern economy, which is neither real property nor bullion but choses in action (shares, debts and more complex contractual or contract-like entitlements).

It is even true, to an extent, of pre-modern incorporeal property rights such as foraging rights and certain sorts of easements.


----------



## JohnRTroy

The key thing is, virtually all laws are constructed by man and are "artificial".  Even if you accept the terms of "Natural Law" (as it, rights designated by either objective nature, divine will, some objective moral principle etc.), that's not really something that could be proved, but rather argued philisophically.  Therefore, things like the US Bill of Rights can even be deconstructed as artificial privilages setup by man, not to mention property.

That's why I reject arguments designed to sidetrack things, such as "copying is not theft".  While that may be technically correct under the legal code, it ignores the whole purpose of the laws setup to handle that and is a distraction.  Like permerton says, there are lots of laws that are on the books, and law doesn't just deal with the physical.  There's a reason why such "IP" laws were setup, as well as the concept of Intellectual Property being recognized by governments.

I think the key reason why I argue in favor of IP a lot here is I think too many people want to "throw out the whole system", because of some abuses by certain people.  That seems to be a common thought nowadays, and I don't think the other side is seen fairly of late.


----------



## JohnRTroy

> It has no intrinsic value, does not exist in many societies, and has been radically redefined several times every century in American history.




Well, NOTHING has intrinsic value.  Gold, for instance, may be a physically scarce resource, but I doubt a tribe of humans who had little contact with the outside world would care, they'd likely be more concerned with food.  All economies are artificial constructs of civilizations.  

Not existing in many societies:  Well, some societies don't have laws about murder, only mob justice.  There are no civil liberties in some societies.  Does the lack of those laws make them "better".

Radically redefined--Well, all laws go through that.  I mean, remember those 3/5th of a person part of the original constitution?  Radical redefinition does not mean "bad".  We didn't have any laws regarding things that science discovered such as mental illnesses, etc.  Society itself goes through such redefinitions.  The law tries to keep up with society and that why we have laws the founding fathers couldn't even have conceived of because they didn't have knowledge of science and the future or technology.


----------



## S'mon

czak said:


> You are describing the difference between real property and personal property (chattels) not the difference between property and not-property.




No I'm not, I teach this stuff for a living, I know what I'm talking about, and having learned my lesson upthread I will not engage further in arguments about how I'm wrong or don't know what I'm talking about.


----------



## Remus Lupin

Well, I have to say, I've been finding this a most enlightening seminar on property, property law, intellectual property. Professor Kingsfield would be proud (though I think he taught contracts)!


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## czak

S'mon said:


> No I'm not, I teach this stuff for a living, I know what I'm talking about, and having learned my lesson upthread I will not engage further in arguments about how I'm wrong or don't know what I'm talking about.




Where do you teach law if you don't mind me asking?

I've been taught to view property simply rights, not ownership of a physical object. I took from your posts that you consider being a physical object / existing without / despite a law deeming it to exist,  to be a key point of property. But from your irritation I seem to be missing your point, Could you please explain it to me more fully?


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## Mustrum_Ridcully

Mark Chance said:


> That would be an income tax, not a property tax. I pay property taxes for owning property even if that property doesn't generate income. If I use property to generate income, then the property and the income both end up taxed.
> 
> It's enough to make me wish I had an army builder to help defend my money.



Hehe... Maybe this could change the entire interest in defending and holding IP totally.

"Tax the rat farms" [/Lord Vetinari]


----------



## S'mon

czak said:


> Where do you teach law if you don't mind me asking?
> 
> I've been taught to view property simply rights, not ownership of a physical object. I took from your posts that you consider being a physical object / existing without / despite a law deeming it to exist,  to be a key point of property. But from your irritation I seem to be missing your point, Could you please explain it to me more fully?




I'm a senior lecturer in Law at the University of Westminster, London, UK.  I'm course leader, LLM International Commercial Law; modules I teach include LLM Protection of Industrial/Intellectual Property Rights, LLM Legal Aspects of e-Commerce, and LLB Intellectual Property Law, among others.  My PhD doctorate was on the philosophical basis of Copyright law in UK, France & Germany.  If you'd like to do an LLM or short course with us I'd be happy to discuss it in class.


----------



## Mustrum_Ridcully

JohnRTroy said:


> Well, NOTHING has intrinsic value.  Gold, for instance, may be a physically scarce resource, but I doubt a tribe of humans who had little contact with the outside world would care, they'd likely be more concerned with food.  All economies are artificial constructs of civilizations.




But I can still take away your gold. Even if it means nothing to you or me. You won't have it afterwards. It's gone. 

If I steal your idea of using Goblins as a slave race created from children with a growth disease, you can still use it. You don't forget it. Even if I create a setting book build around this idea, you could still do the same! If I had taken away your gold, you can't give it to anyone. You cannot even try, because it's not there.

There _is_ a difference between these two types of things. Figuring out how to value it is the challenge. 

How can we reward someone for having good ideas, without restricting these ideas so no one (or not enough) can benefit from it? We want people to have good ideas. Lots of them. But an idea that you can't use has no worth. In that regard, it is same as with the value of your gold. You can't eat or drink gold, and it can't protect you from the elements or predators either. But we agreed at some point that you can exchange this gold for something that you can drink, or eat, or that can protect you from the elements or from predators or for sexual services or whatever. You can exchange it for something that actually can satisfy one of your needs. That's why it can have worth.


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## Mark Chance

Mustrum_Ridcully said:


> But I can still take away your gold. Even if it means nothing to you or me. You won't have it afterwards. It's gone.
> 
> If I steal your idea of using Goblins as a slave race created from children with a growth disease, you can still use it....
> 
> There is a difference between these two types of things. Figuring out how to value it is the challenge.
> 
> How can we reward someone for having good ideas, without restricting these ideas so no one (or not enough) can benefit from it?




“He who steals my purse steals trash. But he who steals my reputation steals that which is nothing to him, but everything to me.” - William Shakespeare, foreshadowing 21st century IP controversies.


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## Henry

S'mon said:


> I'm a senior lecturer in Law at the University of Westminster, London, UK.  I'm course leader, LLM International Commercial Law; modules I teach include LLM Protection of Industrial/Intellectual Property Rights, LLM Legal Aspects of e-Commerce, and LLB Intellectual Property Law, among others.  My PhD doctorate was on the philosophical basis of Copyright law in UK, France & Germany.




Absolutely amazing whom you get to know on these forums...


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## pawsplay

JohnRTroy said:


> That's why I reject arguments designed to sidetrack things, such as "copying is not theft".  While that may be technically correct under the legal code, it ignores the whole purpose of the laws setup to handle that and is a distraction.




That's really begging the question. Is the purpose of the law to treat copying as theft? My understanding is that US copyright law is based in the Constitutional provision to "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Anything copyright-related that does not promote the progress of science and useful arts has no explicit Constitutional rationale, except under the commerce clause.



> Like permerton says, there are lots of laws that are on the books, and law doesn't just deal with the physical.  There's a reason why such "IP" laws were setup, as well as the concept of Intellectual Property being recognized by governments.




Very recently.



> I think the key reason why I argue in favor of IP a lot here is I think too many people want to "throw out the whole system", because of some abuses by certain people.  That seems to be a common thought nowadays, and I don't think the other side is seen fairly of late.




Who is arguing that? I think I've seen maybe one or two posts, ever, that took that position on these boards.


----------



## pawsplay

JohnRTroy said:


> Well, NOTHING has intrinsic value.  Gold, for instance, may be a physically scarce resource, but I doubt a tribe of humans who had little contact with the outside world would care, they'd likely be more concerned with food.  All economies are artificial constructs of civilizations.




Bull pockey. Gold has intrinsic value as a chemically resistant, ductile metal that is visually distinctive. The aborginal American cultures often used it in utensils. Europeans have used it for centuries in coinage; steel would be inadequate for durable coinage, for instance. Gold is also an excellent conductor, and is used in computer components. 

"They would be more concerned with food" is a weak argument. Air, immediate physical safety, and water are about the only things worth having that outrank food. So what? People need food to eat, so gold is worthless?



> Not existing in many societies:  Well, some societies don't have laws about murder, only mob justice.  There are no civil liberties in some societies.  Does the lack of those laws make them "better".




How did better into this? There are, however, no societies that do not have food, nor are there societies in which gold does not have a potential use.



> Radically redefined--Well, all laws go through that.  I mean, remember those 3/5th of a person part of the original constitution?  Radical redefinition does not mean "bad".  We didn't have any laws regarding things that science discovered such as mental illnesses, etc.  Society itself goes through such redefinitions.  The law tries to keep up with society and that why we have laws the founding fathers couldn't even have conceived of because they didn't have knowledge of science and the future or technology.




Again, what's with the bad? We are talking about different. If you are arguing that society has changed, I will agree, and then I am sure you will readily agree that IP laws have also changed radically. On the other hand, ownership of, say, a block of cheese, has had virtually the same meaning from 10,000 BC to the present day.


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## pawsplay

pemerton said:


> This is true of most property in a modern economy, which is neither real property nor bullion but choses in action (shares, debts and more complex contractual or contract-like entitlements).




Not that I think those kinds of properties are the best examples to bring into this discussion, but just for the sake of argument... you can destroy a debt. Obviously, I cannot destroy a debt I owe to you, since you "hold" the debt, but you could destroy it (indeed, the US Treasury will dutifully acknowledge this as income on my part), and a bankrupcy court can destroy a debt. 

Similarly, shares are easily destroyed. Any time a corporation gets liquidated, all its shares become rubbish.



> It is even true, to an extent, of pre-modern incorporeal property rights such as foraging rights and certain sorts of easements.




Foraging rights are the possession of an object (in this case, a physical territory). I can use foraging, I can destroy it (by, for instance, burning down a forest), and I can certainly exchange it. Foraging rights are ultimately permission to use my land, with my land being the thing I own (privately, or in common with others). 

Now, I will happily argue that ownership of land, property and other things is "natural" only as it pertains to possession, use, and future possession and use. If your uncle dies and you inherit a banana farm 2000 miles away, I consider that statuatory. There are situations where I would assert your ownership may not trump other, more basic rights. For instance, I would not consider being an absentee landlord of a banana farm to give you unlimited rights; in the event of a famine, if locals eat your bananas, that is unfortunate, but whether it constitutes theft is a statuatory matter. 

Imagine a scenario where a billionaire and 24 people are trapped on an island that the billionaire ostensibly owns. Can the billionaire demand they pay him $10,000 a day to have access to water and food supplies on his island? If the rest of the world dissolves in massive warfare, what claim does he have of ownership?


----------



## czak

S'mon said:


> I'm a senior lecturer in Law at the University of Westminster, London, UK.  I'm course leader, LLM International Commercial Law; modules I teach include LLM Protection of Industrial/Intellectual Property Rights, LLM Legal Aspects of e-Commerce, and LLB Intellectual Property Law, among others.  My PhD doctorate was on the philosophical basis of Copyright law in UK, France & Germany.  If you'd like to do an LLM or short course with us I'd be happy to discuss it in class.




Maybe after I secure articles and see the real world. From my (limited) perspective as a student most of the folks from Canada who go to the UK for an LLM or PhD go into academia. Not sure I want to go that route yet.  I like university, but maybe not that much 


Is your thesis available online?


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## S'mon

czak said:


> Is your thesis available online?




No, but PM me your email and I can send you a copy.

Edit: Most people who do a PhD go into academia, but British LLMs are 1-year postgraduate degrees normally undertaken by practicing lawyers to boost their CV with an area of expertise.


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## JohnRTroy

pawsplay said:


> Bull pockey. Gold has intrinsic value as a chemically resistant, ductile metal that is visually distinctive. The aborginal American cultures often used it in utensils. Europeans have used it for centuries in coinage; steel would be inadequate for durable coinage, for instance. Gold is also an excellent conductor, and is used in computer components.
> 
> "They would be more concerned with food" is a weak argument. Air, immediate physical safety, and water are about the only things worth having that outrank food. So what? People need food to eat, so gold is worthless?




You miss my point.  Some societies don't even have the concept of private property, and thus you can't steal land.  Gold as a standard of trade value wouldn't exist in some cultures, they might barter.  The concept of money is an artificial law, yet we have laws against counterfeiting, stealing, virtual transactions, etc.



pawsplay said:


> Again, what's with the bad? We are talking about different. If you are arguing that society has changed, I will agree, and then I am sure you will readily agree that IP laws have also changed radically. On the other hand, ownership of, say, a block of cheese, has had virtually the same meaning from 10,000 BC to the present day.




But the key point is, you are trying to argue (based not just on your immediate prior posts but other posts) that IP can't be compared to property because there's no physical objects involved, and I'm not certain that's the case.  The terminology "Intellectual Property" came about because most elements of society feel there is real value involved and it must be protected.  Despite people like Stallman saying that the term is bogus and should be rejected, I think it's an apt term (and Stallman is something of a radical--he LOVE to play word games and engage in memetic warfare).  The US has the NET act (NO ELECTRONIC THEFT), which technically doesn't deal with theft, but with copyright violation, yet congress considers it an apt term.  



> That's really begging the question. Is the purpose of the law to treat copying as theft? My understanding is that US copyright law is based in the Constitutional provision to "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Anything copyright-related that does not promote the progress of science and useful arts has no explicit Constitutional rationale, except under the commerce clause.




Well, turning it around, does making D&D, Mickey Mouse, Snoopy, and other books and items public domain assist the common good?  The implication is that entertainment = advancements of the science and arts.  And if what you say is true, if there's a huge commerce around these creations, they should be protected as well as any other industry.

I mean, I can understand limits to exclusive rights to inventions that help society, like a new drug, you don't want unlimited patents on those.  And you don't want copyright law to be abused and applied to all ideas and prevent competition.  I also saw recently the documentary "Food, Inc.", and it talked about the patents on DNA, something I think goes too far.  (And especially blaming seed cleaners for violating something that can't be helped due to the nature of cross-pollination).  

But over the last 100 years, large economic interests have sprung up, industries that have a lot of workers and a whole subset.  We never had audio/visual recordings during the constitutional days.  I don't believe many of these works going into the public domain is going to help our society, rather, I believe it would hurt it.  I think, for instance, the Disney company is a great caretaker of its creations and should remain so as long as the law allows.  I'm not sure the copyright extensions can just be attributed to the so called "Evil MAFFIA" (the term for RIAA/MPAA used).  



> Who is arguing that? I think I've seen maybe one or two posts, ever, that took that position on these boards.




I've seen a lot more, especially when the OGL is discussed.  I've seen dozens of posts saying copyright should be limited to something like 15-20 years, it's outdated, etc., people getting mad when WoTC chooses to sue pirates, etc.  Even if this thread one person talked about setting up "creative commons" for trademarks (something that is not possible), etc.  

I don't really want to go into the whole IP thing since this was basically about Trademarks, and I'd like to stick to that.


----------



## Remus Lupin

Well, whether copyright or TM should be limited to 10 or 20 years (which I agree is on the short side for some things, though not all), I do think that the way that it keeps getting extended in the U.S. is abusive. 

Whether a creative commons license in TM is possible, the larger concept of creative commons gives a good alternative to the kinds of burdensomely exclusive uses of copyright (leave TM out of it for the moment), that make life difficult for people who want to utilize IP under fair use.

To give but one example: In a book I edited a couple of years ago, one of the authors had inserted a line -- a single line -- from a hymn, and I had to remove it because we realized too late in the process that we hadn't secured copyright permission, and at that point it was easier to change the article than get the permission if we were to stay on schedule. For one line in a hymn, which ought to be protected under fair use, that's ridiculous.


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## JohnRTroy

Remus Lupin said:


> Well, whether copyright or TM should be limited to 10 or 20 years (which I agree is on the short side for some things, though not all), I do think that the way that it keeps getting extended in the U.S. is abusive.




I've got no problem with CC for Patents or Copyright, as long as the original authors are okay with that.  

Trademarks, people need to realize, are different.  

They never prevent anybody from using the term for non-commercial or what is called fair use, which has been discussed before.  So freedom of speech is not at stake.

In most cases, you can apply for the a trademark of the same name as long as the product or service is in a different category.

To get federal protection you need to pay a fee.

There is a review process in place to prevent abuse.

Trademarks actually have a short lifespan--Federal registration must be done every 10 years, and they must be actively be used (or in some cases, intended to use, though there are limits to that).   If you are not using it actively it can become abandoned and then free for another to use.   There's no real danger of an "orphaned" situation regarding Trademarks.  

They are vital to commerce, as they are part of a company's or product's identity and thus the existence of trademarks for companies is a vital necessity to fair trade.

I think Trademark Law can be abused, but there is a lot less abuse here then you'd see from the other forms of IP.


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## pawsplay

JohnRTroy said:


> You miss my point.  Some societies don't even have the concept of private property, and thus you can't steal land.  Gold as a standard of trade value wouldn't exist in some cultures, they might barter.  The concept of money is an artificial law, yet we have laws against counterfeiting, stealing, virtual transactions, etc.




You're missing the point. Even without the concept of private property, I can steal land. I can walk up to your hut, knock it over, and announce I am taking over. Theft merely requires taking an object to which one is not entitled. 



> But the key point is, you are trying to argue (based not just on your immediate prior posts but other posts) that IP can't be compared to property because there's no physical objects involved, and I'm not certain that's the case.  The terminology "Intellectual Property" came about because most elements of society feel there is real value involved and it must be protected.




Are voting rights property? Is the right to receive emergency medical aid property? Is a baby property? The terminology came about because someone decided to make an analogy between property and what is now called IP.



> Despite people like Stallman saying that the term is bogus and should be rejected, I think it's an apt term (and Stallman is something of a radical--he LOVE to play word games and engage in memetic warfare).  The US has the NET act (NO ELECTRONIC THEFT), which technically doesn't deal with theft, but with copyright violation, yet congress considers it an apt term.




It's a terrible term. Even if infringement were theft, which it is not, the issues are so different that it would be beneficical to emphasize the differences between them. 



> Well, turning it around, does making D&D, Mickey Mouse, Snoopy, and other books and items public domain assist the common good?  The implication is that entertainment = advancements of the science and arts.




Yes. I do not understand why this is not completely obvious. Imagine if you still had to pay royalties to publish Plato's The Republic because the Athenean League decided to extend copyrights for 3000 years. Imagine if the King James translation of the Bible was still under copyright. Imagine if someone was still collecting patent royalties on the invention of the wheel.

The whole point of IP is so we get Mickey Mouse. To get Mickey Mouse, we need Disney, and for Disney, our system currently relies on IP. Mickey should have been in the public domain a long time ago. We are glad we have Mickey, but I don't see how Disney is entitled to millions of dollars forever because they can say, "Well, you know, we invented Mickey, back in the day... well, Walt Disney did, and we have lots of money so we own it now."



> And if what you say is true, if there's a huge commerce around these creations, they should be protected as well as any other industry.




There used to be huge commerce around child labor, too. There's huge commerce around selling alcohol to minors. Nigerian bankers do a fair amount of commerce, too.

"People can become billionaires on this!" does not mean it should be protected. I do not regard concentration of wealth, without regard to its use to society, as an absolute good, but rather, an intrinsic inequality to be avoided.



> I mean, I can understand limits to exclusive rights to inventions that help society, like a new drug, you don't want unlimited patents on those.  And you don't want copyright law to be abused and applied to all ideas and prevent competition.  I also saw recently the documentary "Food, Inc.", and it talked about the patents on DNA, something I think goes too far.  (And especially blaming seed cleaners for violating something that can't be helped due to the nature of cross-pollination).




Copyrights lasting longer than 25 years is too far. Longer than 50 years is just ridiculous.



> But over the last 100 years, large economic interests have sprung up, industries that have a lot of workers and a whole subset.  We never had audio/visual recordings during the constitutional days.  I don't believe many of these works going into the public domain is going to help our society, rather, I believe it would hurt it.  I think, for instance, the Disney company is a great caretaker of its creations and should remain so as long as the law allows.  I'm not sure the copyright extensions can just be attributed to the so called "Evil MAFFIA" (the term for RIAA/MPAA used).




Disney is pretty much the epitome of what's wrong the with system. Want to watch "Song of the South" in a history class, or a film history class? Too bad! Disney won't distribute it. Want to include segments of the world's first talking cartoon at your technology museum? Too bad! Steamboat Willie was protected from entering the public domain thanks to heavy lobbying, not the least thanks to Sonny Bono.

And Disney? Imagine, if you will, that IP had been extended on such original works as Pinnochio, Sleeping Beauty, Snow White, The Hunchback of Notre Dame, The Little Mermaid, and Beauty and the Beast? Does Disney pay royalties to the descents of Hans Christian Anderson, or to Victor Hugo, or the the brothers Grimm? How does society benefit from things entering into the public domain, again? Hmmm....  But at least I can tell you how Disney benefits!

It's the worst hypocrisy imaginable for Disney to cry over their works moving into the public domain. They built their empire on creating origional works, based on material in the public domain.



> I've seen a lot more, especially when the OGL is discussed.  I've seen dozens of posts saying copyright should be limited to something like 15-20 years, it's outdated, etc., people getting mad when WoTC chooses to sue pirates, etc.  Even if this thread one person talked about setting up "creative commons" for trademarks (something that is not possible), etc.
> 
> I don't really want to go into the whole IP thing since this was basically about Trademarks, and I'd like to stick to that.




None of that equates to doing away with IP law. All that relates to attempts, well-reasoned or not, to make IP law something good instead of something bad.


----------



## pawsplay

JohnRTroy said:


> I think Trademark Law can be abused, but there is a lot less abuse here then you'd see from the other forms of IP.




It's the backdoor to extending copyrights indefinitely. Example: the estate of Edgar Rice Burroughs using trademarks on "Tarzan" to prevent people from making movies of Tarzan, even though the book entered the public domain years and years ago.


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## Nikosandros

I can't give more XP to pawsplay, but thanks for making the point about all the public domain things that Disney has used to profit.


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## JohnRTroy

pawsplay said:


> It's the backdoor to extending copyrights indefinitely. Example: the estate of Edgar Rice Burroughs using trademarks on "Tarzan" to prevent people from making movies of Tarzan, even though the book entered the public domain years and years ago.




Not necessarily.  First of all, the additional protect Trademarks give to copyrights is only a small part of the entire Trademark law.  

Secondly, the Trademark only allows certain limits.  You can't use the name in trade but you may be able to refer to the individual.  DC has been able to give their Captain Marvel books, by replacing the name with their own version of Shazam, yet they still can use the name Captain Marvel to describe the character in-story.   I know that while you can't use the Sherlock Holmes trademark to advertise a book or movie, you can include the character in works like Moore did for League of Extraordinary Gentlemen, because prior stories are in the public domain, and it didn't prevent other authors from writing Sherlock Holmes stories, such as The Seven Percent Solution.

Considering how well Pathfinder and the Retroclones are going, I doubt you need to have control over the Trademark D&D to (a) communicate your product is based on an older rule set and (b) use things that are legal for you to use. 

S'Mon might have better expertise as what can be blocked as to a fictional character when copyright expires.


----------



## pemerton

pawsplay said:


> Not that I think those kinds of properties are the best examples to bring into this discussion, but just for the sake of argument... you can destroy a debt. Obviously, I cannot destroy a debt I owe to you, since you "hold" the debt, but you could destroy it (indeed, the US Treasury will dutifully acknowledge this as income on my part), and a bankrupcy court can destroy a debt.
> 
> Similarly, shares are easily destroyed. Any time a corporation gets liquidated, all its shares become rubbish.



I'm not sure I agree with all the above - not that I dispute the points of law, but the sense of destruction involved here is not natural but artificial (or, as you say, "statutory"). In that sense IP rights can be destroyed (eg subject to constitutional constraints on bills of attainder, an act could be passed declaring that there shall be no IP rights in respect of Mickey Mouse).



pawsplay said:


> Foraging rights are the possession of an object (in this case, a physical territory). I can use foraging, I can destroy it (by, for instance, burning down a forest), and I can certainly exchange it. Foraging rights are ultimately permission to use my land, with my land being the thing I own (privately, or in common with others).



Burning down a forest wouldn't necessarily destroy foraging rights in respect of the land concerned, although it might reduce their value (depending on the nature of the rights and the cause of the fire, it might also vest the beneficiaries of the foraging rights with an entitlement to compensation from the owner of the forest).

Depending on the details of the social and legal system in question, foraging rights may be alienable, but then so are IP rights.



pawsplay said:


> Now, I will happily argue that ownership of land, property and other things is "natural" only as it pertains to possession, use, and future possession and use. If your uncle dies and you inherit a banana farm 2000 miles away, I consider that statuatory. There are situations where I would assert your ownership may not trump other, more basic rights. For instance, I would not consider being an absentee landlord of a banana farm to give you unlimited rights; in the event of a famine, if locals eat your bananas, that is unfortunate, but whether it constitutes theft is a statuatory matter.
> 
> Imagine a scenario where a billionaire and 24 people are trapped on an island that the billionaire ostensibly owns. Can the billionaire demand they pay him $10,000 a day to have access to water and food supplies on his island? If the rest of the world dissolves in massive warfare, what claim does he have of ownership?



I don't really dispute any of the above, although I'm a bit more sceptical about even the limited sorts of natural property rights that you refer to above.

It's certainly not my intention to defend (nor to criticise) the system of IP law in the US or any other jurisdiction. But, because of my scepticism about natural property rights, I'm not sure that criticising IP on the grounds that _it's not really property_ is a sound way to go.

My preferred starting point for thinking about IP law is to try to understand the social and economic causes that have led to a situation where, in order to enjoy a common and popular culture, we are dependent upon private commercial actors producing it; and then to try and understand the social and economic consequences of that dependence. Until these sociological and historical questions are worked through, I don't feel we have an adequate handle on what the critique (or defence) of IP law would mean.


----------



## Krensky

pemerton said:


> My preferred starting point for thinking about IP law is to try to understand the social and economic causes that have led to a situation where, in order to enjoy a common and popular culture, we are dependent upon private commercial actors producing it; and then to try and understand the social and economic consequences of that dependence. Until these sociological and historical questions are worked through, I don't feel we have an adequate handle on what the critique (or defence) of IP law would mean.




Most copyright law traces it's roots back to fear of the printing press by the church and governments in Europe, often combined with scribes and illumination trying to hold onto their old, obsolete business model.

It's evolved quite a bit since then though. In the US, it was originally an explicit deal. You get unlimited rights for 20 years (a good chunk of a professional lifetime in the eighteenth century), then it enters the public domain. Technically speaking, it's still a limited term, but who wants to bet we won't see another Mickey Mouse Protection act in the 2020s?


----------



## pemerton

Krensky, I guess I was thinking more of the underlying sociological issues.

For example, before the 19th century popular culture (to the extent that we can meaningfully talk about such a thing - "folk culture" might be a bit better though still problematic) was generated in collective contexts by ordinary people acting out of non-commercial motives. Copyright was therefore a non-issue for most people - even if, for the sake of argument, Mozart enjoyed IP rights in respect of his compositions, for most people the legal restriction this would have placed upon their reproduction of his works would be irrelevant. They had their own musical culture ("folk songs") which they acquired and/or created through non-commercial means and which they enjoyed without any mediation by legal or commercial considerations.

Over the course of the 19th century this largely ceased to be true, at least in industrialised countries. People in such countries are dependent today, for most of their culture, on acquiring cultural "product" from commercial enterprises who have a commercial interest in producing that product, and depend for commercial success upon controlling non-commercial access to it. This is a dramatic social transformation. And I tend to feel that _this_ is what is central to understanding and debating IP.


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## Krensky

That's what threw me.

You need to go a long long way back in history to find a point when entertainment wasn't commercialized. Probably so far back you're in the murky pre-history business. What has changed though is the size of the companies involved, and the technology for reproducing it. Mostly the companies, but then again record companies where screwing artists over  from day one the same way the Stationer's Guild screwed authors in Britain over. The current trend of monetizing and seizing every single possible dime (and calling any you may hypothetically think you might have missed somewhere a loss) is a modern contrivance.


----------



## pemerton

Krensky said:


> You need to go a long long way back in history to find a point when entertainment wasn't commercialized.



I think this in part depends on what you mean by "entertainment". Most leisure and/or "cultural consumption" in a pre-industrial village doesn't have a very significant, if any, commercial component. Even when there is payment to performers, the cultural product itself is typically not a highly commercialised matter.

In contrast to that, almost every moment of leisure or "cultural consumption" in a contemporary industrial society is overwhelmingly commercial both as far as the cultural product is concerned, and the means whereby it is acquired for consumption: TV, cinema, books, music, posting on D&D websites, etc.


----------



## Krensky

pemerton said:


> I think this in part depends on what you mean by "entertainment". Most leisure and/or "cultural consumption" in a pre-industrial village doesn't have a very significant, if any, commercial component. Even when there is payment to performers, the cultural product itself is typically not a highly commercialised matter.
> 
> In contrast to that, almost every moment of leisure or "cultural consumption" in a contemporary industrial society is overwhelmingly commercial both as far as the cultural product is concerned, and the means whereby it is acquired for consumption: TV, cinema, books, music, posting on D&D websites, etc.




So no one paid for books? For sheet music? For instruments? No one purchased tickets to the carnival or the circus or fair or the traveling theater troupe? No one supported the local preacher via tithe or charity? No one went to baseball games (or cricket, rounder, etc) or bought equipment for such? 

I think you're romanticizing the preindustrial a bit much here.


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## UngainlyTitan

Krensky said:


> So no one paid for books? For sheet music? For instruments? No one purchased tickets to the carnival or the circus or fair or the traveling theater troupe? No one supported the local preacher via tithe or charity? No one went to baseball games (or cricket, rounder, etc) or bought equipment for such?
> 
> I think you're romanticizing the preindustrial a bit much here.



In many cases no, they could not afford to. Some sheet music and books were sold as were ticket to travelling predormances but that was relatively rare outside towns and even so the majority did not go at least until the 19th century. 
As for sports, in many cases people made the stuff them selves or cricket was sponsored by the local nobleman who retained workmen specifically for their skill at cricket (the players) and the rest were made up of his other aristocratic buddies (the gentlemen). 
Resources were consumed but it was not commercial as currently understood at least not all of it. 
A lot of the peasant economy was an exhcange of labour not coin at least in Ireland where aspects of it survived until the mid twentieth century.


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## pawsplay

ardoughter said:


> In many cases no, they could not afford to. Some sheet music and books were sold as were ticket to travelling predormances but that was relatively rare outside towns and even so the majority did not go at least until the 19th century.
> As for sports, in many cases people made the stuff them selves or cricket was sponsored by the local nobleman who retained workmen specifically for their skill at cricket (the players) and the rest were made up of his other aristocratic buddies (the gentlemen).
> Resources were consumed but it was not commercial as currently understood at least not all of it.
> A lot of the peasant economy was an exhcange of labour not coin at least in Ireland where aspects of it survived until the mid twentieth century.




Having a fair day and taking a day off from plowing to play music and dance is still economic activity.


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## Mark Chance

*A*ll I can think is that *r*ight away bad publicity *m*ight be best handled with humility rather than *y*awping about legal rights and responsibilities *b*ecause, as *u*sual, *i*t's difficult to explain *l*egal issues in a *d*efinite but *e*asy-to-understand manner *r*egardless of how careful one is.


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## UngainlyTitan

pawsplay said:


> Having a fair day and taking a day off from plowing to play music and dance is still economic activity.



Maybe so but no money changes hands or anything else except alcohol 
and that only on special occasions. In the abasence of TV, radio or recorded music people had to entertain themselves and the musicians and singers usually got noting in return other than ego boo. 

Though a fair day was all about buying and selling produce, time off for music was in the evenings after work and only an all day event at wedding and wakes and festival days.


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## Krensky

So, really the answer comes down to:

The phonograph and radio revolotionized distribution of audio, and the train and car revolutionized distribution of the printed word, combined with the general increase in leisure time and disposable income from industrialization made everyone a 'town dweller' for entertainment.

Honestly, you guys are missing the forest for the trees. Entertainment has always been about filthy lucre. Well, filthy calories at the least. Those who could afford to do so, paid for entertainment, those who couldn't entertained themselves.


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## S'mon

pawsplay said:


> Having a fair day and taking a day off from plowing to play music and dance is still economic activity.




It has an economic impact but it's not commercial activity if no buying, selling or payment is involved.


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## S'mon

JohnRTroy said:


> S'Mon might have better expertise as what can be blocked as to a fictional character when copyright expires.




What you're saying (esp Pawsplay) re copyright vs TM looks right to me.  I remember giving a talk about 13-14 years ago at the British Library  to BLACA - about - decrying the use of TMs to prevent use of out-of-copyright works (like Tarzan), back when this was cutting edge stuff.  Heck, I probably gave some IP lawyers some evil ideas!


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## S'mon

BTW I wouldn't count bulletin board discussions, blogs, facebook, PBEM games, amateur Youtube movies etc as commercialised product, despite the commercial medium - IMO such 'user generated content' is much closer to being 'folk art'.  I think there's a reasonable case that many people today are *much* less dependent on commercial entertainment than, say, 20 years ago.


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## pemerton

Krensky said:


> So no one paid for books? For sheet music? For instruments? No one purchased tickets to the carnival or the circus or fair or the traveling theater troupe? No one supported the local preacher via tithe or charity? No one went to baseball games (or cricket, rounder, etc) or bought equipment for such?
> 
> I think you're romanticizing the preindustrial a bit much here.



I didn't say no one, I said most. Most were illiterate.

And most leisure time was not spent at circuses or fairs or being entertained by troupes - which in any event were not commercial conglomerates remotely comparable even to a contemporary opera or theatre company, let alone Disney or a commercial television broadcaster.



S'mon said:


> It has an economic impact but it's not commercial activity if no buying, selling or payment is involved.



Exactly right. And tithing was not commercial, either, although it involved the payment of money or goods.

I'm not intending to romanticise the pre-industrial. But equally, one does not want to be anachronistic about it. There is a reason that the romantics and other 19th century figures (both conservative and radical) lamented the coming of industrialism. It really did have a dramatic impact on the nature of cultural (and other) aspects of life.


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## pawsplay

ardoughter said:


> Maybe so but no money changes hands or anything else except alcohol
> and that only on special occasions. In the abasence of TV, radio or recorded music people had to entertain themselves and the musicians and singers usually got noting in return other than ego boo.
> 
> Though a fair day was all about buying and selling produce, time off for music was in the evenings after work and only an all day event at wedding and wakes and festival days.




I think virtually every society that has generated a surplus has produced professional or semi-professional entertainers. Whether you are talking about Irish fili, wandering gypsy fiddlers, Athenian lyricists, there have always been specialists, and there has always been music. 

I'll disagree about "nothing in return"... no community is going to let their musicians go hungry, without cause. It's more like working for non-profit than commercial activity, but it's still an economic activity that has been with us for a long time. Musicians have traditionally played at their own wishes, but certainly it was the wish also of the community that they played.


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## UngainlyTitan

pawsplay said:


> I think virtually every society that has generated a surplus has produced professional or semi-professional entertainers. Whether you are talking about Irish fili, wandering gypsy fiddlers, Athenian lyricists, there have always been specialists, and there has always been music.



I was not talking about them, they mostly played in the towns where people could afford to listen to them. If a travelling troupe visited the rural villages it was at best a one a year thing.




> I'll disagree about "nothing in return"... no community is going to let their musicians go hungry, without cause. It's more like working for non-profit than commercial activity, but it's still an economic activity that has been with us for a long time. Musicians have traditionally played at their own wishes, but certainly it was the wish also of the community that they played.



They guys/gals that nowadays would earn some extra cash playing in the local bar or at weddings would in the old days play in the rambling houses ( the ones where people gahtered to swap stories and other social occasions for free. The reward was, I guess that they were guaranteed to be invited to all the parties. 
This is according to old folk, around here that I asked who remembered the end of those days.

In rurral Ireland up to World War two there were probably less than a half dozen radio sets in the parish and probaly a similar number of gramaphones though I have no info on the latter, no-one ever mentioned them when talking about that era. Music that they enjoyed was live and played by local amateurs.


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## Layander

I have never heard of lone wolf before today and so I was looking up army builders a few days ago because I wanted something that helped me with warhammer fantasy battles. I find this debate here.
        This is rediculous, your telling me that if I say I want a good army builder for Warhammer FB you will send a letter to morris? I know you dont want your product to become a generic name but sorry to late, I never heard of your product, but those were the first words that popped in my head to describe what I wanted for warhammer. That makes it pretty generic as I am sure most others have had the same thought.
       Let me say this lone wolf I will continue to refer to anything that helps me build an army in warhammer as an army builder, if its made by you or if its made by someone named jim.
      Sorry about your trademark but loosing it to genericy is a risk you took when you chose something that is a generic description of the program.

I am posting this because they beleive they have the right to control what people in a discussion group can say, I can call army builders anything I want and its not in your rights to stop me. If you disagree send someone over to my house so you can interupt my game sessions as we talk about what army builders work well.

From Lone Wolf 
""Any website where users post information that uses the Army Builder name improperly must either remove the content or revise it, at their discretion. This often results in the content being removed, since sites are frequently reluctant to change content they did not create, and with good reason. The easiest way to avoid having posts removed in the future is to simply use a general term like "points calculator", list creator", or "roster construction tool" in reference to products other than Lone Wolf Development's Army Builder brand.""


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## pemerton

pawsplay said:


> I think virtually every society that has generated a surplus has produced professional or semi-professional entertainers. Whether you are talking about Irish fili, wandering gypsy fiddlers, Athenian lyricists, there have always been specialists, and there has always been music.
> 
> I'll disagree about "nothing in return"... no community is going to let their musicians go hungry, without cause. It's more like working for non-profit than commercial activity, but it's still an economic activity that has been with us for a long time. Musicians have traditionally played at their own wishes, but certainly it was the wish also of the community that they played.



The contrast I drew was not economic/non-econmic, but commercial/non-commercial.

The notion that avoiding hunger - for musicians or anyone else - requires being able to participate in a market is comparatively new. Likewise for the notion of participating in cultural life.


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## Krensky

pemerton said:


> The contrast I drew was not economic/non-econmic, but commercial/non-commercial.
> 
> The notion that avoiding hunger - for musicians or anyone else - requires being able to participate in a market is comparatively new. Likewise for the notion of participating in cultural life.




Only because the economic concept of a market as something other then the place you went to buy or sell things is new. Similarly, people have always paid to participate in cultural life. The concept of someone being 'cultured' as a reference to social class comes from this.


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