Unfortunate Developments with Privateer Press

[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

 

[AngelDeath82]

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).

 

[rob]

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.

 

[rexell]

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...

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.

 

[rob]

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.

 

[Frankenskid]

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.

 

[Jeremy2020]

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.

 

[Colen]

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.

 

[Frankenskid]

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"......

 

[Duggan]

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.

 

[rob]

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.

The issue that many gamers aren't aware of is that we are legally obligated to ensure our trademarks are not being misused. We don't get to choose in the matter, even if it's a fan-created tool that we would prefer not worrying about. If we discover one of our trademarks being misused, we have to act. If we don't, then we could potentially lose the trademark. That's the way the laws are written, and we have to follow them.

The goal here is to ensure our trademark is used in reference to our brand of products and not other products. In essence, the situation is analogous to someone using your name for something you had no involvement in. It causes confusion, or much worse, and I'm sure you can envision the various implications that could arise if someone else used your name. The same basic implications hold true for trademarks and the products they reference.

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

Those names have their roots in simple words from the English language. They have only become "specific" through the acquisition of secondary meaning by the success of the products for which they apply. The exact same is true for Army Builder, since the term was not in general use when the product was first released in 1998 and it has gained secondary meaning over the course of 12 years. The USPTO concurred with this position many years ago.

 

[n0valoco]

I just hope that the USPTO buys enough copies of your unnamed product to keep your lights on and your employees in house.

So referring to myself as an army builder due to the fact that I have been wargamming for the last 20+ years somehow is detrimental to the software that I have used on occasion at a friend's house that I bought for him? Nice...

I guess I'll get a C&D if I put down "army builder" as a hobby of mine on Facebook? LOL

Yeah, great effort to NOT make yourself look like a Douche. God luck with any furher ventures and thanks for replying to none of my emails that I sent since I set up this account here.

In an era when game shops and companies are closing at an alarming rate due to a massive downturn in the economy, I simply have to shake my head at a company that decides to burn bridges that really are not very strong to start with. I can only wish you well with trying to get additional volunteers to write the code that keeps your unnecesary software current with game releases. It really won't matter to me at all.

 

[Duggan]

So referring to myself as an army builder due to the fact that I have been wargamming for the last 20+ years somehow is detrimental to the software that I have used on occasion at a friend's house that I bought for him? Nice...

Nope.

I guess I'll get a C&D if I put down "army builder" as a hobby of mine on Facebook? LOL

Nope.

In neither case are you releasing a product including the trademarked name. *facepalm* Why is it that whenever a topic like this comes up, you get people who can't seem to get the distinction between using a name where it can be mistaken as a trademark and just using it? If you said something was a "mickey mouse operation," people would understand that it was shoddily built. If you claimed that a building was "a marvel of archetecture", they'd know that you were impressed by it. If you try to market "Mickey Mouse Peanut Cookies" or "Marvel Bedspreads", you're going to get people from Disney and... well, Disney on your back for infringing their trademark. Similarly, here, it's not people calling themselves "army builders" or saying that they enjoy "army building" or even saying that they're using an "army builder program." It's the people who are releasing "Bob's Army Builder" and "Army Builder 2010."

{shakes head} I know that kids aren't being taught the same things in school as they were when I was growing up, but when did they lose the ability to parse the English language?

Just because it always seems obligatory, not an employee of Wolf Lair, just a fan with enough knowledge of the legal system to know that they're doing the reasonable thing they need to to keep themselves from being crowded out of the market by knockoffs trying to ride their coattails by appropriating their trademark.

 

[Mr_Rose]

Why is it that whenever a topic like this comes up, you get people who can't seem to get the distinction between using a name where it can be mistaken as a trademark and just using it?

The answer is that, unfortunately, people generally are entirely incapable of critical thought. There is no process that starts from "I've just read some information explaining how trade mark law works two posts above mine" and goes to "I should integrate that information into my reasoning about this issue" in the mind of the prototypical modern consumer drone.

Speaking of...
How is your facebook page these days? Has everybody managed to find it again after what happened the other day?

 

[rob]

Hold on there, Mr. Rose. Please keep any frustrations under control here. I truly appreciate the fact that you, Duggan, and other posters have leapt to our defense on this issue. However, this is already a very emotionally charged topic for some, and responding in kind could simply degenerate the thread into a flame war that defeats its entire purpose. While I can empathize to some degree, level heads need to prevail here. Please keep the discussion civil and constructive.

 

[rob]

God luck with any furher ventures and thanks for replying to none of my emails that I sent since I set up this account here.

What emails are you referring to here? We received a small number of emails from people about this issue. Some expressed concrete concerns, while a few were simply venting and provided nothing to substantively respond to. The former group received replies, and the latter did not. I'll go back through and see if we missed something that should have received a reply.

 

[Mr_Rose]

Hold on there, Mr. Rose. Please keep any frustrations under control here. I truly appreciate the fact that you, Duggan, and other posters have leapt to our defense on this issue. However, this is already a very emotionally charged topic for some, and responding in kind could simply degenerate the thread into a flame war that defeats its entire purpose. While I can empathize to some degree, level heads need to prevail here. Please keep the discussion civil and constructive.

Yes, sorry. Target of opportunity. I have altered the final statement to be more generic; I merely wished to provide supporting evidence for my hypothesis rather than make specific claims about individuals.

 

[P3wnd_666]

Have you ever heard of a game called age of empires????
if not then let me explain
it is a strategy game that came out in1997 in it you control units and trade with other factions
there is a campaign editor in it which many of my friends and people who played it in my local community referred to as an army builder before the release of your software
this shows that your reasoning of 'it is has become a popular term because of our tool' is a cocky (over-confident) exaggeration
pretty much any strategy game with a campaign editor tool lets you build armies. are you going to complain to almost the whole strategy gaming community about using 'your term' before you trademarked it???

 

[rob]

there is a campaign editor in it which many of my friends and people who played it in my local community referred to as an army builder before the release of your software

If I understand this correctly, your local gaming community used the term "army builder" for an editor within a computer game. And you're using that as the basis for claiming the term "army builder" was not popularized within the miniatures gaming community by our Army Builder product brand over the past 12 years.

Here's some information to consider. If you do a search through the Usenet archives on Google dating back to 1997, you won't find references to the term "army builder". Starting in 1998, references abound, and they all refer to our Army Builder product. If you search through the old eGroups (now YahooGroups) archives, you'll get similar results. Back in 2003, the US Patent & Trademark Office did an exhaustive search of their own to vet our trademark application. If the term had been in use as a general term, the application would have been denied. However, the USPTO drew the conclusion that the term was suitable to grant the trademark.

So it's quite possible that your local gaming group used the term "army builder" back in 1997. However, an isolated group does not make for widespread use. The widespread popularity of the term "army builder" within the miniatures community is attributable to the global adoption of the Army Builder brand as a de facto standard over the past 12 years, and the term has acquired significant secondary meaning as a result.

 

[Duggan]

My apologies for venting my spleen overmuch. I let myself get worked up too readily. Mr. Rose, I'm not entirely certain I follow the intent of the article you posted. Although I certainly hope that the people posting comments about thinking the page was the actual Facebook page were being facetious...