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The Army Builder trademark and threats of legal action

Section: Misc. articles

Background

The following is a summary narrative and explanation of the events that occurred at the end of January 2010 when WarFoundry (and a number of other projects and websites) were threatened with legal action over what Lone Wolf Development perceived as mis-use of their Army Builder trademark.

As WarFoundry is an open source project, I feel it is important to be open about everything to do with the project and to ensure that the community knows what I know, as we're all affected by various decisions and actions. As such, and since Rob Bowes and Lone Wolf Development are also interested in ensuring that the community are properly 'educated' about this matter, a separate article for the members of the WarFoundry community is available on the main WarFoundry.co.uk website. This article contains only relevant quotes from Rob and full disclosure from myself.

Full discussion and the original developments as they happened were also posted for comment by the community on the WarFoundry section of the HWT forums.

Sections:

The opening threat

On the evening of Friday 29th January 2010 I checked my email, only to find a number of different copies of the following email, from Rob Bowes. Similar emails can be seen throughout the Internet as other communities explain the situation - much of it appears to be a pro-forma that was sent to everyone.

Hello Stuart, This message is to inform you that it's come to our attention you are improperly using the Army Builder trademark throughout a variety of websites you control. All these uses appear to be in conjunction with the WarFoundry roster construction tool with which you are involved in the development, along with ancillary references from other sites and your forum signatures. In order to ensure your receipt of this notification, I am submitting it via multiple websites that you control. Please forgive the duplication. Once you establish return contact, I will limit contact to the email address you select. The name Army Builder exclusively refers to the Army Builder BRAND of roster construction software tools (or points calculators, if you prefer). While other roster construction tools certainly exist, the name Army Builder may only be legally used in conjunction with the Army Builder brand from Lone Wolf Development. 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", "list creator", or "roster construction tool". However, we cannot allow the improper use of our mark, as doing so could result in us losing the trademark. Due to the concise nature of the Army Builder name and the product's prominence in the marketplace for more than decade, some consumers (perhaps including yourself) may mistakenly use the name to refer to other tools. This is like using the term Band-Aid to refer to another brand of adhesive bandages, and it's something we are legally required to monitor. We therefore have no choice but to insist that you immediately cease from making any further use of the name Army Builder to refer to your products and remove all references to the name from all internet postings concerning your products. If any advertisements or promotions of your products make use of the Army Builder name, including versions posted on download sites (e.g. cnet.com, tucows.com, etc.), the postings must be removed and a suitable retraction made prominently on that site. Assuming you take these steps and confirm to us via email (rob@wolflair.com) within 72 hours that you have done so, we will assume that your infringement was not intentional and will take no further action against you in this matter. 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. In case you are unfamiliar with how trademark protection works, it is a legal requirement that we police the use of our trademarks. 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 http://en.wikipedia.org/wiki/Genericized_trademark). 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. Thank you in advance for your timely cooperation in this matter. Rob Bowes, President Lone Wolf Development, Inc. --------------------------------------------------------------------------- Rob Bowes (rob@wolflair.com) (408) 927-9880 Lone Wolf Development www.wolflair.com

This was the first I knew that using two words from the English language in a descriptive form (the noun for a military force and the agent noun of an alternate verb for creation) could cause you any kind of legal problems. It was a good job that I wasn't on holiday that weekend, otherwise I would have returned on Monday to find that the deadline had elapsed and legal action was going to be taken against me. On the plus side, at least they were kind enough to welcome anyone to create their own roster creation applications!

No matter how stupid it seemed that someone at the US Patents and Trademarks Office had granted Lone Wolf Development a trademark on a perfectly sensible descriptive term, they were the ones with the lawyers and so I complied with their request and did what I could to avoid legal action. Note that all of this relates to the description of WarFoundry as a cross-platform, mutli-system, open source application - we have never used the phrase as part of our name (which could, in some cases, more easily be confused with their trademark).

Personal opinion on the trademark

While Wikipedia isn't the most trustworthy of sources for legal advice, Rob had already used it as a reference and so for personal interest I read up on some related areas. That lead me to two sections that I thought were interesting and relevant, but which I didn't bring up so as not to inflame the situation. The first was a Trademark distinctiveness page, which implies that Army Builder sits somewhere between a descriptive mark ("builder" is a common concept in software, e.g. the builder pattern of software design) and a generic mark. Secondly, and following the "builder pattern" point and general definition of "builder", the Trademark page says that Maytag have a trademark on "Whisper Quiet" as a brand, but that it doesn't stop other companies describing their goods as "whisper quiet" since it is a suitable description of their capabilities.

Rob also says that "it is a legal requirement that we police the use of our trademarks", which is only partially true. The provision of a trademark comes under the condition that its use is monitored and that action is taken to ensure that it does not become diluted. That does not, however, necessitate threats of legal action, nor does it mean that there is legislation equivalent to "child neglect and abandonment" where they will be prosecuted for not monitoring its usage.

On a related note, I also find it interesting that an email I have from 2002 from GW Legal contains the words "This means that only the following builders are acceptable" in relation to Rollcall - so even though they didn't precede it with "army", GW were considering Rollcall a "builder" application eight years ago.

Appeasing the situation

My first attempt at a resolution was to find a general phrase as a replacement that wasn't their trademark (I first chose "army building application"), before updating my website. In the mean-time I responded to Rob to make sure he knew I was taking action and to explain my situation and reasoning:

Rob, I am sorry that you believe I am infringing on your trademark. It was not my intent to infringe, just to accurately describe what my application does. Terms like "Roster" focuses on the wrong section of the process (you're building an army and representing it as a roster, not creating a roster of generic items) and "points calculator" is such a generic and bland term that it could cover one of a million different products not necessarily concerned with building armies. Instead of those terms, I used the phrase "army builder" to represent the fact that the tool helped you build your army, with the phrase being a descriptive suffix rather than part of the name (like "Thunderbird email client"). We are a non-profit group of hobbyists and I do not believe that we pose a threat to your commercial interests. However, if you feel that my description of the application (which is not part of its name) that uses a term to describe what is being created (an "army") and a generic term to describe what the application is (a "builder" app) infringes on your trademark then I shall do what is necessary to remove the phrase where I can. Unfortunately, due to the nature of the Internet, I may not be able to remove it from all locations as not all locations will be under my control. I will, however, do what I can to remove all references that I am able to within the 72 hour time frame that you have imposed. Please contact me directly before proceeding with any further action, as I am doing everything in my power to comply with your request. Regards, Stuart

Through-out the following discussions, I tried to point out the genericness of their trademark, the fact that we were using those words within a description and not as part of a name, and the fact that I was willing to co-operate to avoid the lawyers. Now it was a case of waiting - with the cross-Atlantic communication, we were never necessarily going to be online at the same times.

Rob's explanation

In response to my attempts to appease the situation and ensure that they didn't do anything rash and crazy (like jump to the lawyers), Rob responded with his explanation of what he felt the law required them to do.

Basically, Rob's email pointed out the cause of this problem but treated it as some kind of unexpected legal issue. Lone Wolf Development created an application and named it using a generic and descriptive phrase from the English language. Hero Labs and Card Vault, on the other hand, are original and unique names that Lone Wolf Development chose for their other applications. When people then use the generic and descriptive words that they chose as a name in generic and descriptive ways then they start to complain about trademark infringment. If they'd come up with a better name in the first place then the problems would never have occurred and no threats of legal action would have been necessary against anyone!

The first resolution

Carrying on with the "army building application" phrase on the assumption that the Army Builder trademark could only stretch to exact use and direct derivatives, I started to replace all instances of the offending words - a process which took most of Friday evening and a good proportion of my Saturday (where I was supposed to be enjoying myself). Once it was done, I notified Rob:

Rob, I believe I have now cleared up all uses of the phrase "army builder" when used as a description of my application within sites that I control, replacing them with the description "army building application". Hopefully this complies with your requirements as it does not use the phrase "Army Builder" that you have trademarked (or even its uncapitalised generic descriptive form). The only remaining uses of the phrase that I am aware of within my control are either references to your application or discussion with my community to say that the phrase is not to be used as a description of my application due to the trademark issues, along with a suggestion to use the alternate phrase. Beyond my own sites and the editable information that I have created on other sites (e.g. the project's Ohloh profile for open source software) there is very little that I can do. I have, as mentioned, asked my community to refrain from using the phrase "army builder" in describing my application, but I cannot control whether they use it or not, especially as many of them may be from nations that do not recognise a US trademark. It is also infeasible and almost certainly impossible for me to track down any and all cached and/or uneditable content and make the site owners modify it. Unfortunately that kind of decentralisation and lack of control of information on the Internet as well as its international reach is one of the founding strengths of the Internet/World Wide Web that I cannot influence, and as such I cannot provide a list of remaining references held or created by third-parties. Hopefully these measures are satisfactory, as I believe I have done all that I can to remove uses of the description that you have trademarked from the locations that are under my control. Again, it was not my intent to infringe on your trademark but only to accurately describe my application using what seemed like a generic and accurate phrase. I have done all I can to comply as swiftly as I could once you have brought your concerns to my attention. As I understand it your trademark applies specifically to only the phrase "Army Builder", as used by your application, and is specific to the US as the location of the registration. If this understanding is not accurate or you feel that my actions are not sufficient then please can you clarify the extent of your trademark or indicate which additional actions you feel I need to take. I did briefly read the Wikipedia article yesterday and am familiar with the concept of trademark genericism. However, I see a difference between the use of a new and specific name that previously didn't exist and that has become genericised (e.g. Zipper, Escalator, Asprin and Hoover) compared with the use of a generic descriptive phrase that has been taken as a name (an "army builder" builds armies and a "death ray" is a ray that does death). This difference of genericised name versus generic phrase was, I believed, evident in my use of the phrase "army builder" as a lower-case word within a tag-line such as "the cross-platform, open-source, multi-system army builder" and not as part of my application's name. As the law sees no differentiation between a name and a generic description with regards registered trademarks and as you have been granted the use of the phrase as a trademark (at least within the USA,which is the location of my server even if it isn't my location) then I have no choice but to comply with its decision. I hope that my actions meet your criteria and satisfactorily resolve this situation. For your information, you may also wish to contact Google regarding your trademark. Currently, if you search "Rollcall" (the name of an old army building application that I have maintained) then one of its first suggestion is "Rollcall army builder" (with that exact capitalisation). This implies that Google itself has already seen "army builder" as a generic term for an application that helps to build armies. There are also a variety of other applications from other groups and individuals that use the phrase "army builder" to describe their applications that help build armies. Regards, Stuart

Having done what I thought was necessary, I again pointed out the obviousness of my use of the phrase, as well as laying out the limits of what I was able to edit. Since Rob had not been clear on the extent of their trademark claims, I also tried to get clarification.

As Rob had referred me back to his Wikipedia link, I made vague references to it and how I was using a generic name rather than genericising a trademark. The summary I posted on the forums was one of Eddie Izzard's comments on Star Wars: "Whats that star? It’s the Death Star. What does it do? It does Death!" - I felt like I was in a similar situation here.

I also tried to indicate that he may be on to a losing battle in retaining a generic description as a trademark, since Google itself was already using it as a suggestion in relation to other applications. As much as anything, I was interested to see how they'd try to take on Google over the issue!

Not good enough!

Despite choosing a slightly different generic description based on the English language that I felt would be acceptable, Rob felt otherwise and my wasted time updating the site instead of developing things had to be repeated.

Of all of his emails, I found this response to my first attempts at resolving the issue the most contentious, dubious and potentially misleading.

Firstly, Rob claims to know how things would pan out if anyone ever challenged them and tried to use "army building application" by stating that it "will be seen both by consumers and the court system as either similar or derivative of the "Army Builder" trademark". I don't know much about law, but if I was at all unsure of the situation then that would seem like a claim that would smack me straight back in line to be completely compliant and paranoid of what might happen. They can presume that it will go their way, or suggest that it is likely to, but to claim that it will go their way seems like dubious practice. It'd be interesting to know what their lawyers think about that statement.

Secondly, the money. As a follow-on from the first point, not only does Rob claim that the courts will rule in his favour, should it ever go that far, but he then brings up that he feels he can trust his lawyer on these matters and that he "pays his firm very well for that expertise". Not that price means anything - getting a well paid idiot wouldn't be difficult - but bragging about having an expensive lawyer (who may well be expensive to Rob but cheap as chips to someone like Google) further pushes home the "don't bother questioning us - just do exactly as we say" slant of the emails.

Thirdly, the extent of their claims. Again, I don't know the specifics of the law, but common sense would suggest that the claims should be stretching the limits a little. Whether the law and common sense agree is another matter, though. Rob's claim that "that terms like 'army building' and 'builder of armies' would be deemed as fundamentally infringing on the trademark" seem equivalent to someone calling a company "Tower Builder" and then threatening anyone setting up companies like "Joe's Skyscrapers" who call themselves "the local tower building company".

Finally, they've obviously not been doing a good job of policing their trademark. I know that "Army Builder" had been used in relation to Rollcall for four years, WarFoundry had been described using the phrase since its creation in 2007 and GW Legal (as already mentioned) partially used the phrase back in 2002, leading me to use it in the title of an article.

While I can see that "derivative phrases" such as "Joe's Army Builder" or "Army Buildering Tools" would be derivations that infringe, stretching it to "builder of armies" seems a bit extreme. Once again, though, they had the lawyers and so I wasn't in the position to argue.

Clarifying the situation

Having been told that what I did was insufficient, I tried to ensure that my failed initial attempt wouldn't cause further problems, explaining the situation as I saw it.

Hi Rob, I'm sorry that you (or your lawyers) believe that my initial attempt at resolving this is insufficient. I thought that the use of an accurate and simple descriptive English phrase would not be a continued infringment of your trademark. I chose the new phrase on good faith as something that I believed to be a non-derivative phrase containing an English noun of the end product ("army") and a verb to describe the action that the application helps the user with to create that end product ("building"). An interpretation that this still infringes your trademark seemed to me, when I made the choice, to be comparable to saying that calling something "escalating" infringed on the "Escalator" trademark when it was first created despite the fact that "escalating" is a common English word. I note that you say I cannot use derivatives of the term (including some example derivatives), but that your trademark registration disclaims exclusive rights to the term "army". Am I correct in understanding that this means I can use terms such as "army creator" and that it is only the combinations of the concepts of "army" and "builder" in combination in both their named and descriptive form and that names such as "army creator" would be acceptible? I am in discussion with my community about alternative descriptive phrases, but wish to use something more accurate and meaningful than phrases like "points calculator". Please inform me as soon as possible whether you feel that the term "army creator" infringes upon your trademark, as I have already wasted a considerable amount of my free time attempting to comply with your request, and I do not wish to repeat this more than necessary. Is it still acceptable to yourself and your lawyers if, in addition to being used in direct relationship to your product, the phrase "army builder" remains (for at least a short period) in text on my sites explaining that the phrase is not to be used because it is a trademarked name? If not then please can you advise on what you believe would be an acceptable way for me to explain to my community that the phrase (and descriptive, non-capitalised phrases that contain similar words) should not be used? In this regard I feel I have the conundrum of effectively saying "don't call the monkey a primate" when "primate" is a prohibited word. As I said, I am a hobbyist and the project is open source/non-profit. I fully realise that my understanding is not important for the actual interpretation of the law. This is why I am doing everything that I can to resolve this situation amicably. As I have made an attempt to resolve this issue that was unfortunately not as satisfactory as I would have hoped, then I would find it hugely helpful if you could give me an extension to resolve this matter fully. I was not intentionally infringing on your trademark in the first instance, and I am co-operating and attempting to remove such infringement as I would like this matter to provide as little futher intrusion on both of our time as possible. I am, however, limited in what I can achieve as a single person modifying things in a given time. Thanks, Stuart

As mentioned earlier, "builder" is the agent noun of "to build" and "building" is the present tense of "to build". Both use a common base verb from the English language, which I had felt was reasonable. After all, why should "escalating" infringe on the trademark "Escalator"? Both have their basis in the verb "to escalate", and the former is a description while the later is a new word.

In an attempt to find out where they thought their trademark laid, I tried to find out the specifics (which turned out to be quite enlightening, if worrying). To avoid wasting more time I also asked for confirmation that a new phrase that I chose as a description was acceptable and wouldn't result in further threats from them.

Most importantly, I wanted to ensure that I could explain the situation correctly to the community. While it would seem sensible that I could explain it, sensible and law are not always best friends. The situation I was in felt like I might end up having to try to describe something (WarFoundry or the monkey) in a general way (an application for creating armies or a primate) without mentioning that general way!

Trying to force a name

Rob's response to my query was, at the same time, both useful and telling. In effect, by saying that they "don't actively suggest it, because we prefer to omit both formative words of our trademark from a market standpoint, but it is a perfectly valid choice" Rob admitted that they cannot stop people using sensible names and descriptions like "army creator", but that they purposefully suggest blander, less descriptive and less recognisable names that don't include words with a common base to those in their trademark in the hopes that people will leave them with the monopoly on "Army ..." names and descriptions.

The attached text that was suggested for dissemination to the community was what could be termed "interesting". As should be obvious, it had a very definite pro-Lone Wolf Development spin on it and was not something that I would ever have used. Instead, I wrote our own explanation (on the forums and in various places on the websites).

With regards the "other IP owners", I'm assuming that they mean GW Legal, as they do have a bad reputation. To be honest, though, my experience with GW Legal was that they were less communicative but nicer about the situation (albeit in a 'corporate' way). Rather than saying "you are infringing - fix it within 72 hours or we bring in the lawyers", GW Legal told me that they were "flattered" by my interest but that I was infringing on some of their IP, before listing some important points that I should check out. At no point were lawyers and threats of legal action ever mentioned.

Compromise reached

As it appeared that we had reached a compromise on a phrase that was sufficiently descriptive and likely to be found by customers as well as not being perceived as an infringement their trademark by Lone Wolf Development.

Rob, I am glad that there is a compromise that we have reached on this issue and that there is a phrase that I am able to use that succinctly describes the functionality of my application without infringing on your trademark that is also derived from the same base words. I will attempt to remove all uses of the phrase "army building software" and all disallowed uses of the phrase "army builder" that I am able to edit. My time is more limited today than it was yesterday, and so I will have to update you at the end of today regarding my progress. I am sorry that you have had to take such action, and I hope that my 'cleansed' content will meet with your approval. I shall endeavour to avoid future use of your trademark in any way by myself or my community (wherever I have control) in a manner that may be considered infringing. Regards, Stuart

Again, I was polite about the situation, while not conceding that I directly infringed on their trademark. I also tried to reiterate the seeming difference between "derivative phrase" and "sibling phrase derived from a common base".

Confirming the changes

Eventually, and with the help of version control to find out where I'd made changes last time, "army building application" was replaced with "army creation application" or "army creator". With more of my day wasted and my tasks seemingly complete, I tried to confirm the changes I'd made with Rob to make sure that no further action would be threatened.

Rob, I have done what I can and I believe I have now edited all use of "army builder" or derivatives of the common base words that may be considered an infringing use with regards a description of my application where it is possible and within my control. All remaining uses should, as I understand it, be fair and reasonable use in direct reference to your application. Hopefully this resolves the issues so that you can review the site and we can put the matter behind us. If not then please indicate any remaining infringements that you believe may exist and I'll do what I can as soon as I can to resolve them. Regards, Stuart

Confirming the changes - with a deadline

Unfortunately, while Rob was perfectly happy to respond quickly while he felt there was potential legal action involved, once I complied with their requests then I suddenly became a low priority and didn't get a response. Since I had been given a deadline in the first, and since it had been so long since my last email with no comment, I sent a second request with a deadline of my own in an attempt to put a line under the situation.

Rob, It has now been nearly 120 hours since I last emailed you to say that I believed I had cleared up all uses of the term "Army Builder" that were not a reference to your application, all all uses of terms from common base words that you also claimed sole ownership of. It is also approaching 100 hours since the deadline that you set in your original email. So far I have not heard from you with either confirmation that my sites are okay as they stand with the changes that I made, or with details of aspects of my site that you perceive as still potentially infringing on your trademark. Please respond within 24 hours, or I will assume that yourself and your lawyers are happy with the content of my sites as they stand. If this is not the case then I remain happy to discuss the situation to come to an amicable arrangement and await your notification on what you feel is not acceptable. Regards, Stuart

"We won't say 'yes'"

Interestingly, the inclusion of a deadline in my email prompted a response within fifteen minutes of sending the message! Unfortunately, in a clasically political style, Rob was unwilling to give a definite "yes" to say that they were happy with the content of my website and did not perceive any further issues as it stood. Instead, the response could be paraphrased as "everything is okay so far but we haven't checked everything (so we reserve the right to still complain)".

Trying to get an answer

Since the phrase "unless you fear from me further" covers an infinite amount of time in the future, the situation wasn't resolved and so I tried again. This time I wanted specific problems or I'd assume that everything was okay and that they were just stalling. To be fair and reasonable, I even provided a cut-off point after which I'd consider it "new content" that they may not reasonably have read.

Rob, It has been approaching 100 hours since your last email and I have not received any update. While this should mean that all is okay, I'd like to be sure of the situation. In accordance with your last email, if I do not receive any details of specific pages that contain text that you believe still infringes on your trademark (or any of the associated phrases that you also make claims on) then I will assume that both yourself and your lawyers are happy with all of the content that is currently on my website (as of the time of my last email - 20:30pm GMT, 5th Feb 2010). As before, I remain happy to discuss the situation to come to an amicable arrangement and await your notification on specific areas that you feel may not be acceptable. Regards, Stuart

Final deadline

Finally, three weeks after the whole thing first started and hundreds of hours after the last response from Rob, I sent what I hoped would be the closing email:

Rob, It has now been around 250 hours since I last sent you an email and I have not seen a reply. As I put forward in my email below, I have now taken this to mean that you have accepted and agree that the content of my websites as of the 5th February 2010 is acceptable to you and that you do not perceive any of the content available on it to be using phrases in a way that you feel may be infringements of your trademark. Hopefully this email can finally draw a line below the whole issue and provide an adequate conclusion. Regards, Stuart

Hopefully the whole incident is behind us now. The only thing that remains is to see what the EFF lawyers can tell me regarding the claims, the description, the coverage of the trademark, and some of Rob's assertions.

Around the Internet

We got off lightly...some groups got thrown in at the deep end. The following is a list of sites that I know also received "warning shot" emails before the legal threats, or direct legal threats. Please contact me if you know of more.

Overall, this seems to have caused a bit of a kick-back in the community, some of whom are not happy with Lone Wolf Development's heavy-handed tactics and are not going to buy from them again, as well as doing all they can to ensure that the people they know also know about these events.

Direct legal threats

The following websites didn't get a warning and got hit straight away with a Cease and Desist letter from

Warning emails

The following websites, as far as I understand it, received warning emails from Rob as a preliminary warning to resolve the situation, or warn them of impending legal action.

General coverage

As is common in these cases with a social group such as gamers, coverage has spread across the Internet to be reported in other locations:

Conclusion

While I can see that Lone Wolf Development need to protect their trademark or lose it, there were much better ways that this situation could have been handled. Their claimed extent of coverage seems to stretch further than is reasonable, and all situations appear to have had either direct Cease and Desist letters or threats of further action.

What is worse is that if Lone Wolf Development hadn't chosen and been granted what basically amounts to a generic and descriptive trademark then none of this would have had to occur anyway.

As a final kicker, comments from Rob imply that the use of the phrase descriptively (as I found on Wikipedia) is an acceptable use of the English language. Given that we have always used it descriptively in relation to WarFoundry then that implies that the original claim was baseless and that no changes need ever have been made, and that his claims to further combinations of the phrase were also incorrect. I'll wait and see if the EFF lawyers agree.

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