Stardock Systems, Inc. v. Reiche

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Stardock Systems, Inc. v. Reiche
US DC NorCal.svg
Court United States District Court for the Northern District of California
Full case name Stardock Systems, Inc. v. Paul Reiche III and Robert Frederick Ford
DecidedDecember 27, 2018
CitationsStardock Systems, Inc. v. Reiche, No. 17-cv-07025-SBA, 2018 WL 7348858 (N.D. Cal. Dec. 27, 2018)
Court membership
Judge sitting Saundra Brown Armstrong
Keywords
United States copyright law, United States trademark law, Digital Millennium Copyright Act

Stardock Systems, Inc. v. Paul Reiche III and Robert Frederick Ford, 2018 WL 7348858 (N.D. Cal. Dec. 27, 2018) is a legal case that led to a settlement confirming an intellectual property split for the Star Control series of games. After a motion at the United States District Court, the parties agreed that series creators Paul Reiche III and Fred Ford owned the copyrights for the games Star Control (1990) and Star Control II (1992), while Stardock owned the Star Control trademark, with neither side using each other's intellectual property in future releases.

Contents

The Star Control copyrights were separated from the trademark in the early 2000s. Accolade allowed their copyright license to expire and revert to Reiche and Ford, who re-released Star Control II as The Ur-Quan Masters . Meanwhile, Accolade's assets were acquired by Atari SA, who later declared bankruptcy in 2013. Stardock purchased Atari's Star Control assets in a bankruptcy auction, leading the parties to acknowledge that Reiche and Ford retained their copyrights, while Stardock owned the trademark. In 2017, each side accused the other of violating their rights: Stardock was selling the original games without Reiche and Ford's consent, whereas Reiche and Ford announced a sequel to Star Control II without Stardock's consent. Stardock filed a lawsuit, and Reiche and Ford counterclaimed that Stardock was unlawfully selling their games and misappropriating their work in the upcoming game Star Control: Origins . Stardock responded by filing trademarks in character names from the original Star Control games.

In late 2018, Stardock's request for an injunction against a copyright takedown was denied by Judge Saundra Brown Armstrong. Steam and GOG.com removed the games from their stores, but restored Origins after Stardock agreed to accept responsibility for any potential infringement. In 2019, both sides agreed to a settlement, with Reiche and Ford owning the copyright to Star Control I and II, and Stardock owning the Star Control trademark. Both series would remain separate, with Reiche and Ford avoiding use of the original name, and Stardock avoiding use of the original fictional universe.

Intellectual property history

Original Star Control series

Star Control and Star Control II were created by Paul Reiche III and Fred Ford and published by Accolade. [1] Released in 1990 and 1992 respectively, both games received numerous awards. [2] Journalists have listed Star Control among their best games of all time, [3] with Star Control II earning even more "best game" rankings through the 1990s, [4] 2000s, [5] and 2010s. [6] It is also ranked among the best games in several creative areas, including writing, [7] world design, [8] character design, [9] and music. [10]

Star Control was Ford and Reiche's first collaboration. [11] [12] The sequel was more ambitious, forcing the duo to ask their creative friends for help, [13] and forcing Ford to financially support the team when the production went over schedule. [14] Accolade asked Ford and Reiche to make a third game at the same budget, which they turned down to pursue other projects. [15] As Reiche and Ford held the copyrights over first two Star Control games, [14] Accolade licensed Reiche and Ford's designs to make Star Control 3 with a different team. [16] [14] Released in 1996, Star Control 3 did not enjoy the acclaimed legacy of the first two games, with reviewers noting the change in authorship. [17] [11] [18] Accolade's plans for a fourth Star Control game were ultimately cancelled during development, [19] [20] and fans continued to demand a new Star Control game well into the late 2000s. [21] [22]

The 1992 Star Control II cover describes Paul Reiche III and Fred Ford as the Copyright holders, with Accolade holding the trademark. Star Control II reverse cover.png
The 1992 Star Control II cover describes Paul Reiche III and Fred Ford as the Copyright holders, with Accolade holding the trademark.

Separation of rights

By the early 2000s, the Accolade's publishing agreement with Reiche and Ford expired. [23] This was triggered by a contractual clause when the games were no longer generating royalties, allowing the copyrighted content to revert to Reiche and Ford. [24] [25] As the games were no longer available in stores, Reiche and Ford wanted to keep their work in the public eye, to maintain an audience for a potential sequel. [24] Reiche and Ford still owned the copyrights in Star Control I and II, but they could not successfully purchase the Star Control trademark, leading them to consider a new title for a potential follow-up. [26] [14] This led them to remake Star Control II as The Ur-Quan Masters , [27] which they released in 2002 as a free download under an open source copyright license. [28] The official free release prevented the game from becoming abandonware. [29]

Meanwhile, the Star Control trademark was transferred to Infogrames Entertainment. [27] This happened when Star Control publisher Accolade sold their company to Infogrames in 1999, [30] who merged with Atari and re-branded under the Atari name in 2003. [31] [32] In 2011, GOG.com began selling a Star Control re-release on their digital store. [33] Ford contacted the sales platform, saying they could not sell the games without permission, leading GOG.com to separately license the Star Control trademark from Atari, and the games themselves from Reiche and Ford. [16] [1] [34]

Atari declared bankruptcy in 2013, and their assets were listed for auction. [35] Stardock became the top bidder on Atari's Star Control intellectual property. [36] Upon hearing the news, Paul Reiche indicated that he still owned the copyright in the original Star Control games, so Stardock must have purchased the Star Control trademark, and this was confirmed by Stardock. [37] [38] Indeed, the Atari asset purchase agreement listed two assets sold to Stardock: the Star Control trademark and the Star Control III copyright. [1] As Stardock began developing their new Star Control game, they re-iterated that they did not acquire the copyright to the first two games, and that they would need a license from Reiche and Ford to use their content and lore. [31] [39] Reiche and Ford echoed this understanding in a 2015 Game Developer Conference interview, stating that Stardock's game would use the Star Control trademark only. [40]

Facts

A promotional image from Stardock published by Ars Technica in September 2017, illustrating Stardock's planned connection between Star Control: Origins and a "Future Fred Paul Sequel" Star-Control-Universe-1280x1081.png
A promotional image from Stardock published by Ars Technica in September 2017, illustrating Stardock's planned connection between Star Control: Origins and a "Future Fred Paul Sequel"

In September 2015, Stardock announced that their new game Star Control: Origins would be a prequel to Star Control. [42] Through email, Stardock asked Reiche and Ford for a license to use their character designs, but the duo repeatedly declined. [16] [23] By 2016, Stardock described Origins as an alternative timeline in the same Star Control multiverse, but with none of the older games' characters, [26] to avoid infringing on Reiche and Ford's copyrighted lore. [31] [39] Despite Stardock's continued offers, Reiche and Ford declined to collaborate on Origins, citing a desire to create their own sequel once they finished their ongoing projects with Activision. [26] [1]

In October 2017, Stardock began selling the older Star Control games via the Steam store, as a promotion for Origins. [43] Through email, the parties began to dispute what legal rights Stardock had purchased from Atari, [44] and whether that included distribution rights over the original series. [1] [45] Despite private negotiations, Stardock declined to stop selling the games, leading Reiche and Ford to formally request that Steam remove the original series from their store via a Digital Millennium Copyright Act (DMCA) takedown notice. Stardock formally contested the notice, and the sales continued. [44] [1] When Reiche and Ford publicly announced that they did not consent to Stardock's sale of the original series, Stardock announced that they had purchased the Star Control publishing rights from Atari, while Reiche and Ford responded that Atari's publishing rights had lapsed by Atari's own admission. [45]

Also in October, Reiche and Ford announced Ghosts of the Precursors as a direct sequel to Star Control II. [46] Initially, Stardock supported this announcement for Ghosts of the Precursors as a "true sequel to Star Control 2", [46] [47] and claimed their new Origins game would take place in an alternate universe that split off from the original series' universe. [48] By December 1, Reiche and Ford announced that Stardock had not negotiated their legal permissions, and that "our games' universe has absolutely no connection, hyper-dimensional or otherwise". [49] [50] Responding to allegations that Stardock threatened to stop Reiche and Ford from releasing Ghosts of the Precursors, Stardock announced their lawyers would handle the dispute. [51] [23]

Stardock claimed that Reiche and Ford's blog post about Ghosts of the Precursors infringed the Star Control trademark by featuring the Star Control II cover art. Star Control II cover.jpg
Stardock claimed that Reiche and Ford's blog post about Ghosts of the Precursors infringed the Star Control trademark by featuring the Star Control II cover art.

Trademark claim

On December 8, 2017, Stardock filed a lawsuit against Reiche and Ford in the U.S. District Court for the Northern District of California. Stardock's main contention was that their Star Control trademark was infringed when Reiche and Ford announced Ghosts of the Precursors as a "direct sequel" to Star Control II. [1] Stardock further contended that Reiche and Ford were not the creators of Star Control, and were misleading consumers about their involvement in the series. [1] In the months that followed, Stardock applied for more than 20 new trademarks, and filed an amended claim in March 2018 to claim ownership over them. These trademark applications included names of alien races from the original Star Control, and the mark The Ur-Quan Masters. [52] If authorized by the United States Patent and Trademark Office, Stardock's new trademarks could have the effect of preventing Reiche and Ford from using those aliens in a new game. [53] When correspondence surfaced that Stardock planned to use The Ur-Quan Masters and Star Control trademarks to shut down criticism from both games' fan forums, Stardock CEO Brad Wardell responded that this was a moment of anger and he had no intention of actually doing so. [54]

In February 2018, Reiche and Ford answered Stardock's complaint by asserting several defenses, as well as raising a counterclaim against Stardock for copyright infringement. [55] Reiche and Ford argued that their Ghosts of the Precursors announcement did not infringe Stardock's trademark, and suggested that Atari's trademark renewal was invalid given that Star Control was not used in trade for several years. [16] Reiche and Ford also counterclaimed that Stardock was liable for copyright infringement due to Stardock's unauthorized use of characters and designs from Star Control I and II, and unauthorized sale of the original games. [1] Reiche and Ford further pointed out that Stardock had no valid copyright or distribution rights because, under their original contract, Accolade had lost those rights in 2001 when it ceased to sell the games in stores. [1] Reiche and Ford also represented that they never authorized Atari or Stardock to distribute their games, but that they did authorize GOG.com. [1] Reiche and Ford further contested Stardock's claim over TheUr-Quan Masters trademark, and alleged that Stardock had misled customers about the duo's involvement with Origins. [16]

Settlement discussions

In a 2015 Game Developers Conference interview, Reiche and Ford stated that they held the copyright in the first two games. Stardock later sued them personally in 2017. Classic Game Postmortem- Star Control (16552069930).jpg
In a 2015 Game Developers Conference interview, Reiche and Ford stated that they held the copyright in the first two games. Stardock later sued them personally in 2017.

In March 2018, Reiche and Ford described an alleged settlement offer made by Stardock, asking Reiche and Ford to compensate Stardock US$225,000 in damages, assign their Star Control intellectual property to Stardock, and refrain from making any game in the same genre as Stardock for five years. Reiche and Ford rejected this settlement as "unfathomable". [52] Stardock responded that the two has misrepresented the terms of the confidential settlement offer, leading Reiche and Ford to publish the settlement offer publicly. [56] [57] A week later, the court ordered the parties to keep all settlement negotiations confidential. [58] As Reiche and Ford were sued personally, they turned to crowdfunding to pay for some of their legal costs. [59]

Ruling on Stardock's motion for preliminary injunction

In her 20-page order, Judge Saundra Brown Armstrong denied Stardock's motion for an injunction against Reiche and Ford. Judge Saundra Brown Armstrong official portrait by Scott Johnston, oil on linen 38x26 inches, collection of the United States District Court of Northern California, Oakland.jpg
In her 20-page order, Judge Saundra Brown Armstrong denied Stardock's motion for an injunction against Reiche and Ford.

On September 7, 2018, Stardock filed a motion with the Court requesting a preliminary injunction preventing Reiche and Ford from issuing a DMCA takedown notice against Stardock's forthcoming Origins game. [60] [61] Judge Saundra Brown Armstrong denied Stardock's request on December 27, 2018, agreeing with Reiche and Ford that Stardock had been aware of the intellectual property issues by their own admission, but still started work on a potentially infringing product, calling the situation one of Stardock's own making. [61] Describing some of the claims as "frivolous", Judge Armstrong wrote: [62]

Defendants [(Reiche and Ford)] object to Wardell's declaration [that] "Stardock has not incorporated any copyrightable artwork from Star Control I, Star Control II or Star Control III into the Origins game itself," on the ground that Wardell lacks the expertise necessary to opine as to what constitutes "copyrightable artwork". Indeed, not only has Wardell failed to establish any such expertise, but his opinion as to whether the work in question is "copyrightable" constitutes an improper legal conclusion. Such legal conclusions are without evidentiary value.

...

Plaintiff [(Stardock)] had knowledge of Defendants' copyright claims from the outset. Despite that knowledge, it developed potentially infringing material without resolution of the IP ownership issues, and then publicized the release of that material during the pendency of this action. It now claims that its investment in Origins and reputation are on the line. Given that Plaintiff largely created the foregoing predicament, the Court is disinclined to extricate Plaintiff from a peril of its own making.

After the ruling, Reiche and Ford issued a DMCA takedown notice to Steam and GOG.com. Stardock did not file a counter-notice, and the games were subsequently removed from sale at the beginning of 2019. [62] Reiche and Ford defended the DMCA takedown requests by pointing out that the substantial similarities between Origins and Star Control II were evidence of intentional copying, in violation of copyright. [63] Later that month, both Steam and GOG.com restored Origins for sale. When Stardock owner Brad Wardell mentioned that the digital stores had reviewed and reconsidered the takedown, Polygon revealed correspondence where Stardock offered to accept potential copyright liability and secure both stores from the consequences of litigation. [64]

Settlement and intellectual property split

In June 2019, the parties agreed to a settlement, [65] [66] with Reiche and Ford owning the right to continue their series, while Stardock owns the right to use the Star Control name for a separate game. [67] [68] Reiche and Ford would use a new name for their fictional universe, [69] while Stardock promised to avoid using any plots, characters, or locations that would infringe on Reiche and Ford's copyrights. [66] Both sides agreed that Stardock will own the Star Control trademark, and Reiche and Ford will own the Ur-Quan Masters trademark, with a perpetual trademark license to the Ur-Quan Masters fan community for their open source project. [65] As part of this, Stardock dropped their trademark claims to the alien names from the first two games. [65] Reiche and Ford also agreed to remain quiet about Ghosts of the Precursors for a few years, and rename their eventual sequel. [66] Reiche and Ford later announced Free Stars: Children of Infinity as a sequel to The Ur-Quan Masters, which they re-released under the new "Free Stars" series name. [70] [71] [72]

See also

Related Research Articles

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Star Control: Famous Battles of the Ur-Quan Conflict, Volume IV is an action-strategy video game developed by Toys for Bob and published by Accolade. It was originally released for MS-DOS and Amiga in 1990, followed by ports for the Sega Genesis and additional platforms in 1991. The story is set during an interstellar war between two space alien factions, with humanity joining the Alliance of Free Stars to defeat the invading Ur-Quan Hierarchy. Players can choose to play as either faction, each with seven different alien starships which are used during the game's combat and strategy sections.

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  38. ↑ "There's a new Star Control coming!". Critical Hit. July 24, 2013. Retrieved November 16, 2020.
  39. 1 2 Bradley Wardell (September 3, 2015). "Star Control: September 2015 update". Stardock. Archived from the original on August 26, 2016. Retrieved January 2, 2019. ... my position is that Stardock doesn't have the legal rights to the original lore either. Or, if we did, we have long since refuted those rights. The Star Control classic lore are the copyright of Paul Reiche and Fred Ford.
  40. ↑ Fred Ford & Paul Reiche III (June 30, 2015). "Classic Game Postmortem: Star Control". Game Developers Conference . Retrieved October 22, 2020– via YouTube. Paul Reiche III: When Accolade / Atari / the various companies that acquired it went out of business, they had the trademark Star Control. All of the material, all the aliens, all of the story belongs to Fred and myself. So they're taking the Trademark and moving forward with that.
  41. ↑ Axon, Samuel (October 19, 2017). "Stardock CEO talks Star Control: Origins' player crafting and upcoming beta". Ars Technica. Retrieved November 18, 2020.
  42. ↑ Bradley Wardell (September 3, 2015). "Star Control: September 2015 update". Stardock. Archived from the original on January 3, 2019. Retrieved January 2, 2019. The new Star Control is a prequel. It takes place before the events of the original series.
  43. ↑ Horti, Samuel (October 21, 2017). "Classic '90s space strategy games Star Control 1 & 2 land on Steam". PC Gamer . Retrieved January 2, 2019.
  44. 1 2 Hall, Charlie (February 23, 2018). "Star Control's original creators and new owners are in a legal war". Polygon . Retrieved January 2, 2018.
  45. 1 2 Parfitt, Ben (December 6, 2017). "Star Control devs and Stardock locked in dispute". MCV . Retrieved January 2, 2018.
  46. 1 2 O'Conner, Alice (October 11, 2017). "Star Control 2 creators finally making sequel". Rock Paper Shotgun . Retrieved January 2, 2019.
  47. ↑ Austin Wood (October 10, 2017). "25 years later, Star Control 2 is getting a direct sequel". PC Gamer. Bradley Wardell: [Paul Reiche] asked us not to try to make a sequel to Star Control 2 and said that he hoped one day to be able to return to the universe he and Fred Ford created. Recently, Paul told me the good news: Activision was going to let him do a true sequel to Star Control 2.
  48. ↑ Axon, Samuel (October 19, 2017). "Stardock CEO talks Star Control: Origins' player crafting and upcoming beta". Ars Technica . Retrieved January 2, 2019.
  49. ↑ "Star Control's future may be in jeopardy because of legal squabbling". Critical Hit. December 4, 2017. Retrieved September 8, 2020.
  50. ↑ Shoemaker, Richie (January 17, 2018). "The galactic tussle at the heart of Star Control: Origins". Eurogamer. Retrieved September 8, 2020.
  51. ↑ James Cunningham (December 2, 2017). "Bad Blood, IP Issues Have Stardock, Toys for Bob Squabbling for Star Control". Hardcore Gamer.
  52. 1 2 "Battle over Star Control franchise escalates, settlement offer leaked online". Polygon . March 21, 2018. Retrieved January 2, 2019.
  53. ↑ "Star Control's future is in question as Ghosts of The Precursors devs legally clash with Stardock | PCGamesN". December 2, 2017. Archived from the original on December 2, 2017. Retrieved November 16, 2020.
  54. ↑ Wardell, Brad (September 23, 2018). "Regarding 'Star Control: Origins' and Stardock". forum.uqm.stack.nl. Archived from the original on August 15, 2020. Retrieved November 17, 2020. Bradley Wardell: ... members of the community insisted that we needed to send Serge and co a trademark license in order to send a message that Stardock would not interfere with the UQM project. Thus, this past Summer, I relented and asked the lawyers to draft up a very short licensing agreement for the trademarks in question and sent it over. Your first response was simply to state that you didn't think you needed to sign a licensing agreement which echoed my position and I've seen no reason to pursue it further. If I don't see a reason and you don't see a reason then when should we invest time and energy pursuing it further? With regards to my *private* venting regarding some of the extremely toxic and hate-filled posts that have been directed at me *personally* from this forum. It is true that on occasion I have vented that this forum (not the project but the forum) should be shut down. ... But I would like to think that most of you understand the difference between being angry versus acting on that anger. We have not, nor do we plan to, take any action against any Star Control fan community.
  55. ↑ "Stardock Counter-Sued for Copyright Theft by Star Control Creators". IGN India. February 23, 2018. Retrieved November 15, 2020.
  56. ↑ Batchelor, James (March 22, 2018). "Star Control legal battle intensifies as alleged settlement offer surfaces". GamesIndustry.biz . Retrieved January 2, 2019.
  57. ↑ "Stardock's Settlement Agreement, March 12, 2018". Issuu. March 25, 2018. Retrieved November 16, 2020.
  58. ↑ Spero, Joseph C. (March 29, 2018). "Order Regarding Settlement Discussions" (PDF). United States District Court - Northern District of California. Retrieved December 13, 2020.
  59. ↑ "Star Control Creators Crowdfunding $2M to Defend Against Stardock Lawsuit". GameRevolution. June 25, 2018. Retrieved November 16, 2020.
  60. ↑ "Star Control: Origins removed from Steam by DMCA". Rock Paper Shotgun . January 2, 2018. Retrieved January 2, 2018.
  61. 1 2 Hall, Charlie (January 2, 2018). "Star Control: Origins removed from Steam, GOG following DMCA claim". Polygon . Retrieved January 2, 2018.
  62. 1 2 Lee Hutchinson (January 2, 2019). "Original Star Control Creators Deploy Nuclear Option Against Stardock". Ars Technica. Retrieved January 2, 2019.
  63. ↑ Hall, Charlie (January 3, 2019). "Star Control creators defend their DMCA claim against Star Control: Origins". Polygon . Retrieved January 3, 2019.
  64. ↑ Hall, Charlie (January 30, 2019). "Stardock says it's the victim of DMCA abuse as Star Control: Origins returns to Steam, GOG". Polygon . Retrieved January 30, 2019.
  65. 1 2 3 O'Connor, Alice (June 12, 2019). "Star Control lawfight settled by bees". Rock Paper Shotgun . Retrieved November 29, 2020.
  66. 1 2 3 Hutchinson, Lee (June 11, 2019). "Stardock and Star Control creators settle lawsuits—with mead and honey". Ars Technica. Retrieved November 16, 2020.
  67. ↑ Bailey, Dustin (April 16, 2024). "After 32 years, the 1992 open-world space game that helped inspire Mass Effect is getting a proper sequel". GamesRadar+. Retrieved August 18, 2024.
  68. ↑ Cunningham, James (February 19, 2024). "Star Control II Lands on Steam (Again) as Free Stars: The Ur-Quan Masters". Hardcore Gamer. Retrieved August 18, 2024.
  69. ↑ Cunningham, James (May 1, 2024). "Same Universe with a New Name, Discussing Free Stars: Children of Infinity". Hardcore Gamer. Retrieved August 18, 2024.
  70. ↑ Smith, Graham (April 20, 2024). "Free Stars: Children Of Infinity, name-swapped sequel to Star Control 2, has tripled its crowdfunding goal". Rock, Paper, Shotgun. Retrieved August 18, 2024.
  71. ↑ Serin, Kaan (May 19, 2024). "Free Stars, sequel to the 1992 open-world game that inspired Mass Effect, smashes its Kickstarter campaign over 600% funded". gamesradar. Retrieved August 18, 2024.
  72. ↑ Smith, Ed (May 1, 2024). "32 years since it first launched, one classic PC space game is getting a big new sequel". PCGamesN. Retrieved August 18, 2024.
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