[rob]

Hi there,

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.

Thanks for reading,
Rob