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rob
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Old February 2nd, 2010, 05:38 PM
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

Last edited by rob; February 2nd, 2010 at 05:46 PM. Reason: Fixed typo/wording
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AngelDeath82
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Old February 9th, 2010, 10:13 AM
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).
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rob
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Old February 9th, 2010, 03:02 PM
I'm going to re-post my answer to a related question from another thread...

The widespread use of the term "army builder" is substantively due to the popularity of the Army Builder product. Prior to the product's release 12 years ago, the predominant terms used for roster construction included "making a list", "writing a list", "creating a roster", etc. The term "building an army" was used extensively to refer to the process of collecting the models, assembling them, and painting them. In other words, physically building the troops for the army. The Army Builder product changed all that. After 12 years, the term is now synonymous with creating an army roster for play.
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rexell
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Old February 9th, 2010, 05:13 PM
Quote:
Originally Posted by rob
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.
Very interesting stuff...

Quote:
Originally Posted by rob View Post
The Army Builder product changed all that. After 12 years, the term is now synonymous with creating an army roster for play.
Now I'm no lawyer, but if like you stated above, the term "Army Builder" is in fact synonymous with "creating an army roster for play." Wouldn't you have just stated that your trademark has in fact become genericized? If the term itself is the generic word used for X, then army builder has become just like aspirin or yo-yo within the gaming community.
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rob
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Old February 9th, 2010, 05:25 PM
Quote:
Originally Posted by rexell View Post
Now I'm no lawyer, but if like you stated above, the term "Army Builder" is in fact synonymous with "creating an army roster for play." Wouldn't you have just stated that your trademark has in fact become genericized? If the term itself is the generic word used for X, then army builder has become just like aspirin or yo-yo within the gaming community.
Consider also trademarks like "Band-Aid", "Kleenex", and "Coke". Large portions of the population consider those trademarks to be synonymous with the product category they represent and use them in a general manner, yet those trademarks have NOT be declared generic. A key reason is that the consumer recognizes them to also be a brand name. That's why we have to do our best to make sure miniatures players are aware of the trademark, as awareness is the critical element. Whether those consumers subsequently choose to use the trademark improperly is then a matter of individual choice.
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Frankenskid
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Old February 11th, 2010, 09:02 AM
Quote:
Originally Posted by rob View Post
Consider also trademarks like "Band-Aid", "Kleenex", and "Coke". Large portions of the population consider those trademarks to be synonymous with the product category they represent and use them in a general manner, yet those trademarks have NOT be declared generic. A key reason is that the consumer recognizes them to also be a brand name. That's why we have to do our best to make sure miniatures players are aware of the trademark, as awareness is the critical element. Whether those consumers subsequently choose to use the trademark improperly is then a matter of individual choice.
At the same time you don't see anyone going around telling forums and such to stop using those terms to describe something. You should just enjoy the free advertising when people relate your name with something to build an army. Generic tho it may be. You have got to understand the level of "Streisand Effect" (Credit to Mike Masnick at www.techdirt.com for that term) this is generating. I personalyl have bought your product twice, and to hear you use this sort of "Suggestion" makes me not want to support your product any further. The entire reason why this product is actually wroth a signle thing is the VOLUNTEERS that make the game system files for your program. If it wasn't for them doing the work you product would be worth jack and.... well you get the point once Jack left town.
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Jeremy2020
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Old February 11th, 2010, 09:28 AM
This stance removes any desire to use your product and encourages me to suggest avoiding your company at the local shops I play at as well.
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Colen
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Old February 11th, 2010, 10:23 AM
Quote:
Originally Posted by Frankenskid View Post
At the same time you don't see anyone going around telling forums and such to stop using those terms to describe something. You should just enjoy the free advertising when people relate your name with something to build an army.
I understand this sentiment, but if we acted like this, here is what could happen:

1) We stop trying to educate people about the Army Builder trademark because we want the free publicity.
2) Several free "Army Builder" programs spring up for various game systems.
3) A year or two later, a commercial program is released called the "XYZGame Army Builder", which is easily confused with our own software.

Because we didn't take action at points 1 and 2, we've opened ourselves up for other, commercial, companies to use the Army Builder name in their products. That means that they are taking the hard work we've been doing for the last 12 years, and using it to sell their own products.

Think about it another way - let's say you were going to create your own miniatures game system, and you wanted to call it a "Warhammer Miniatures Game" or a "Warmachine Miniatures Game". Even if you think that would be ok, Games Workshop or Privateer Press or whoever would be required to step in and stop you, or they could lose their trademarks to those brand names. Once they lose the trademarks, anyone could start making (and selling) a "Warhammer Miniatures Game" and they wouldn't be able to stop them.

Game companies don't enjoy having to write and send out letters like these, but it's the unfortunate reality of being in business. If they don't do this, they are at risk of competitors entering the market using the names that they have spent decades building up.
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Frankenskid
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Old February 11th, 2010, 12:54 PM
Quote:
Originally Posted by Colen View Post
I understand this sentiment, but if we acted like this, here is what could happen:

1) We stop trying to educate people about the Army Builder trademark because we want the free publicity.
2) Several free "Army Builder" programs spring up for various game systems.
3) A year or two later, a commercial program is released called the "XYZGame Army Builder", which is easily confused with our own software.

Because we didn't take action at points 1 and 2, we've opened ourselves up for other, commercial, companies to use the Army Builder name in their products. That means that they are taking the hard work we've been doing for the last 12 years, and using it to sell their own products.

Think about it another way - let's say you were going to create your own miniatures game system, and you wanted to call it a "Warhammer Miniatures Game" or a "Warmachine Miniatures Game". Even if you think that would be ok, Games Workshop or Privateer Press or whoever would be required to step in and stop you, or they could lose their trademarks to those brand names. Once they lose the trademarks, anyone could start making (and selling) a "Warhammer Miniatures Game" and they wouldn't be able to stop them.

Game companies don't enjoy having to write and send out letters like these, but it's the unfortunate reality of being in business. If they don't do this, they are at risk of competitors entering the market using the names that they have spent decades building up.
Personally I respect a company that has enough balls to stand up to a recent upstart in a field they have 12 years invested in through providing a better product, more than one that uses flimsy applications of trademark law to try and keep a name out of discussions. If you are so good, and did so much, then someone else calling a recent program they made a builder of armies or whatever should not phase you in the least as you have the market share, the presence in the industry, and the experience to do better. Personally this seems like a huge PR disaster. I have seen it over and over again on techdirt.... innovate or litigate. I appreciate the work it takes, and I have purchased your program before, and have to say I like it, sans some update issues (Like charging to keep getting automatic updates) I enjoy using it.

Also Warmachine and Warhammer are a bit more specific than a general name of an "Army Builder"......

Last edited by Frankenskid; February 11th, 2010 at 12:57 PM.
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Duggan
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Old February 11th, 2010, 01:22 PM
For what it's worth, as someone who has some knowledge of the thorny issues of trademark law, I applaud your decision as being completely reasonable. I don't think the people who are complaining about it really understand the complicated situation you're in. *wry grin* There's a reason why Trademark and Copyright law is one of the few branches of law that you can advertise yourself as specializing in in every state of the country. It's that complicated and arcane, and the stakes are that high.

As regards the comment about Johnson and Johnson not going after message boards where people use lowercase "band-aid," that's because most companies will sue the life out of anyone trying to infringe on their trademarks. Instead, WolfLair is trying to be nice enough to warn people of the issues they're facing by infringing upon their trademark. Try advertising your brand of "John's Band-Aid adhesive bandages" on the internet and I suspect you'll get a summons rather than a warning that you're potentially infringing.
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