Difference between revisions of "Stardock Systems Inc. v. Paul Reiche III and Robert Frederick Ford"
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* [[Media:gov.uscourts.cand.320268.104.0.pdf|(104) MOTION to Dismiss Count Nine of Second Amended Counterclaim filed by GOG LIMITED, GOG POLAND SP. Z.O.O.]]
* [[Media:gov.uscourts.cand.320268.104.0.pdf|(104) MOTION to Dismiss Count Nine of Second Amended Counterclaim filed by GOG LIMITED, GOG POLAND SP. Z.O.O.]]
** [[Media:gov.uscourts.cand.320268.104.1.pdf|(104.1) Proposed Order Granting Motion to Dismiss Fraud Claim]]
** [[Media:gov.uscourts.cand.320268.104.1.pdf|(104.1) Proposed Order Granting Motion to Dismiss Fraud Claim]]
=== Fred and Paul Provided ===
=== Fred and Paul Provided ===
Revision as of 15:39, 31 January 2019
This article describes the ongoing litigation between the makers of Star Control: Origins (SC:O) and the makers of Ghosts of the Precursors (GOTP). SC:O is being published and developed by Stardock Corporation, who purchased several Star Control intellectual property assets from Atari at bankruptcy. GOTP is being developed by Paul Reiche III and Fred Ford, the designers of the first two Star Control games with Star Control intellectual property of their own. Both parties claim that the other has violated their intellectual property rights. Both parties will need to prove the validity of their Copyrights, Trademarks, and licenses, and then prove that the other party has violated their exclusive rights.
This article summarizes the relevant law, events, evidence, and disputes. This includes:
- Whether Stardock violated Copyright by selling the original Star Control games
- Whether Reiche and Ford violated Trademark when they announced Ghosts of the Precursors
- Whether Stardock's plans to include older Star Control aliens violates Copyright, and whether their Trademark applications will succeed
- How the licensing agreement might affect these issues, and whether that agreement is still valid
- Whether the parties have misled customers about who was involved in the original games or forthcoming games
- What efforts the parties have made to compromise, and if any compromise is still possible
Who owns the copyrights in Star Control 1, 2, and 3?
Reiche and Ford are credited as the copyright holders on the original Star Control title screen and packaging, as well as the sequel's packaging. This is consistent with the 1988 Agreement with Accolade, where Reiche and Ford are granted copyright ownership in any games they develop.(pgph 11.1-11.4) Since the lawsuit, Stardock's CEO has confirmed on forums that Stardock does not claim Copyright in the first two games. (However, Stardock's legal complaint does assert that "Reiche and Ford may not have created any of the artwork, animation or characters incorporated in the games, or otherwise substantially contributed to the authorship of Star Control I and Star Control II".(pgph 57))
Star Control 3 belongs to multiple parties, as Accolade developed the game using existing copyrighted content from the first two games. Reiche and Ford agreed to license their intellectual property in Star Control 1 and 2 to Accolade for the development of Star Control 3 (which is documented in an addendum to their original agreement). This is noted on the Star Control 3 CD jewel case, stating Accolade as the copyright holder, while using characters under license from Reiche and Ford. In 1996, Accolade registered the Copyright for Star Control 3 with the United States Copyright Office, which was eventually purchased by Stardock at Atari's bankruptcy (after Atari had acquired it from Accolade).
Who owns the copyright in the music of Star Control?
Music is often separate from the game itself. Section 1.5 of Addendum 3 to the 1988 contract includes "music" under the the intellectual property "owned by Reiche."(pgph 1.5) This suggests that Reiche and Ford might own the music (and not Accolade or any other publisher), but it still leaves an open question about whether the musicians own the music or assigned it to Reiche and Ford at contract.
When Reiche and Ford made Star Control 2, they held a contest for musicians to have their music in the games. One contest winner was Riku Nuottajärvi, who has since released new remixes of that music without objection from any publisher, or from Reiche and Ford. Riku has since been hired by Stardock as the music lead for Star Control: Origins, and has begun remixing some of the original music for the new game.
Neither lawsuit specifically disputes ownership in the music, at present.
What rights are protected under copyright?
Copyright is secured automatically whenever a work (such as computer software, literary work, or other authorship) is created, and does not need to be registered. This gives the copyright holder exclusive rights to the authored work, including the right to reproduce, distribute, or sell that work.
The copyright holder also controls the right to create derivative works based on the original work. For example, a sequel to a game or a movie using characters and other elements from the original would be a derivative work, and needs the permission of the original copyright holder. The creator of the derivative work would be limited to copyrights in the new elements only, and their rights would exclude anything copied from the pre-exising work.
So what caused the copyright dispute?
On October 19 2017, Stardock began selling the original copyrighted games through Steam. Reiche and Ford said they did not authorize this and requested a takedown, and Stardock responded that Reiche and Ford's request includes "Star Control 3 which they admit they had no involvement". In fact, Star Control 3 does use copyrighted content from the first two games, and states that they used characters under license from Reiche and Ford. Star Control 3 is a derivative work based on Star Control 1&2, which Accolade could only create with permission from Reiche and Ford, as seen in the 1995 addendum to their original agreement.
How can Stardock legally sell games copyrighted by someone else?
Stardock claims they purchased a license to sell and distribute the three games (among other legal rights), "that was explicitly transferred to us by Atari who in turn acquired it from Accolade". Recall that in 1988, Reiche/Ford had granted Accolade the right to sell their Star Control games.(pgph 2.2-3.1) Stardock has claimed that they purchased this agreement from Atari at bankruptcy in 2013,(pgph 20) whereas Reiche and Ford claim that this agreement had expired.(pgph 33, 57)
How does a store like Steam handle a Copyright dispute?
The Digital Millennium Copyright Act (DMCA) holds online service providers liable whenever their users violate copyright law. As required by the DMCA, services such as Steam and GOG provide a tool to copyright holders to report any infringing content. The DMCA requires service providers to takedown infringing material once they are notified, but also includes safeguards to protect legitimate content from erroneous or fraudulent takedowns.
The DMCA creates a framework for how a service provider mediates a copyright dispute:
- A copyright owner submits a notification under penalty of perjury, including a list of specified elements, to the service provider’s designated agent. (page 12)
- The service provider promptly removes or blocks access to the material identified in the notification. (page 12)
- The service provider must promptly notify the subscriber that it has removed or disabled access to the material. (page 12)
- The subscriber serves a counter notification ... including a statement under penalty of perjury that the material was removed or disabled through mistake or misidentification. (page 12)
- Unless the copyright owner files an action seeking a court order against the subscriber, the service provider must put the material back up. (page 12)
This process only affects the liability of a service provider like Steam. These services are often uncertain about what is or is not infringing, due to information that is only known by the parties, and it is neither practical nor necessary for them to judge the validity of every notice or counter-notice.
Can Copyright protect characters and plot lines?
Characters can be protected by Copyright. According to federal courts:
At one end of the spectrum, scenes a faire – the stock scenes and hackneyed character types that "naturally flow from a common theme" – are considered "ideas," and therefore are not copyrightable. But as plots become more intricately detailed and characters become more idiosyncratic, they at some point cross the line into "expression" and are protected by copyright.(pgph 35)
Courts have refused to recognize protection for generic "scenes a faire", as you cannot Copyright an idea. Courts have refused to limit use of general ideas like a symbolic struggle between a Russian and an American,, or scenes of slaves being chased through the woods with dogs.(sec IV)
Copyright does protect more specific forms of expression, and thus courts have decided cases to protect characters such as E.T.,(pgph 6-7), Spawn, and Rocky (as well as secondary characters including Adrian, Apollo Creed, Clubber Lang, and Paulie).(section A.2) Even the Batmobile had distinctive enough characteristics to be protected by Copyright.
In the Second Addendum to the 1988 Agreement, Reiche and Ford allowed Accolade to "develop Star Control III using certain characters created by Reiche in Star Control and Star Control II".(Recitals) The Addendum further attributes "all characters" and "other intellectual property rights pertaining to Star Control I and Star Control II in which Reiche has an ownership interest",(pgph 2) which led Star Control 3 to credit "characters created and used under license from Paul Reiche III and Fred Ford." A later Addendum also describes "characters" among the "Reiche Intellectual Property".(pgph 1.5)
How does a licensing agreement work?
An intellectual property holder can legally transfer any of their rights to a third party. This can be any or all of the copyright holder's rights, including the right to sell and distribute copies of their work, or the right to adapt their work into a new derivative work. A licensing agreement is a contract, and the terms of such a contract can be whatever the parties agree is fair.
What is in the 1988 Licensing Agreement?
Reiche and Ford gave Accolade the exclusive right to sell copies of Star Control. It also made sure that any sequel (derivative work) made by Reiche & Ford would have copyright owned by them, while a sequel made without Reiche & Ford would have copyright owned by accolade, subject to the original copyright held by Reiche/Ford.(pgph 3.1) It also granted Accolade the Star Control Trademarks, while ensuring that Reiche & Ford would own any copyright in any games they develop.(pgph 11.3-11.5)
A 1995 addendum to the agreement granted the right to Accolade to develop Star Control 3, with intellectual property under license from Reiche and Ford. (Another addendum for an unfinished Star Control 4 game expired after no game was produced.) Accolade effectively purchased from Reiche/Ford the rights to use pieces of the original games in the new sequels, but those parts would still belong to Reiche/Ford, with only the truly new parts of the sequels belonging to Accolade.
Acquisition of licensing agreement
Accolade was eventually bought out by Atari (formerly Infogrames), who then took the place of Accolade as the legal license-holder to Reiche/Ford's copyrights.
Atari declared bankruptcy in 2013 and sold its assets to various parties. Stardock purchased all Star Control assets from Atari at bankruptcy,(page 14) who claims that these assets included the 1988 Licensing Agreement.
But is the agreement still valid?
Paragraph 2.1 describes the Term of the agreement, which would continue "for as long as such Work, Derivative Work, and Derivative Product are generating royalties to the Developer at least of $1000 per annum".(pgph 2.1) In an email from the early 2000s, Ford claims that Accolade "told us they are going to default on this payment which means we are back to owning the characters and settings." By this time, the games were widely considered Abandonware, including SC1,, SC2,, and SC3. More recently, Reiche and Ford have claimed that the games stopped being sold in 2000, and they stopped receiving royalties, and thus the license expired at that time.(pgph 37)
In a 2011 email thread between Reiche and Atari, both parties agreed that the 1988 License had expired years prior.(apr 25) In 2015, Stardock had stated "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." Years later, conversations between Stardock and Reiche eventually led them to discuss the License Agreement. In October 2017, Stardock asserted to Reiche that the games were on sale at that time, and thus generating royalties at the minimum required by the original license. Reiche responded that Atari had agreed that the license expired during the 2001-2011 period of non-sale, and that it would be impossible for Stardock to regain those rights.
In addition to the Term clause, Reiche and Ford have highlighted three other clauses that would have caused the license to expire before Stardock's puchase:
- Paragraph 12.1 states that the "Agreement may not be assigned by (Accolade) without first obtaining the written consent of (Reiche and Ford)".(pgph 12.1) Reiche claims he did not give permission for Atari to assign the agreement to Stardock.(pgph 57)
- Paragraph 7.1 states that the Agreement terminates upon bankruptcy of the publisher,(pgph 7.1) which Atari filed for in 2013.
- The 1998 addendum to the 1988 agreement included a three year term, which would have granted Accolade rights to any game they made during this term, but states after three years that the “Reiche Intellectual Property granted hereunder shall revert to Reiche”.(pgph 4.1) This would have expired on April 1, 2001.
Who owns the Trademark in "Star Control"?
Stardock purchased the Trademark to Star Control from Atari in their bankruptcy asset sale.(exbt A, sch 1) In a settlement offer, Reiche/Ford have been willing to accept that Stardock is indeed the legal Trademark holder to "Star Control".(sect IVb) However, the Reiche/Ford lawsuit alleges that the Trademark may have expired due to years of non-use, during the period where none of the games were for sale in the early 2000s.(pgph 41)
What rights are protected under Trademark?
According to the United States Patent and Trademark Office, "A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services."
At its most basic level, this would mean that Stardock has the exclusive right to develop and release video games with the words "Star Control" in their title. However, Stardock also argues that their ownership of the Trademark also gives them the right to all unique names that have ever appeared in Star Control games, as well as the right to "determine what is canon in the Star Control universe". Reiche and Ford contest this claim, as they had asked Stardock to withdraw their trademark applications for the alien names in their March 22 settlement proposal  and dispute the legality of Stardock's trademark applications for the alien names in their Counterclaim.(pgph 119-121) The same Counterclaim also distinguishes between the STAR CONTROL trademark and the in-universe organization called "Star Control", and argues that Stardock's inclusion of the latter in SC:O violates Reiche and Ford's IP rights.(pgph 103)
What is the dispute?
In October 2017, Reiche and Ford announced they would be creating a sequel to Star Control 2 called "Ghosts of the Precursors". Initially, Stardock echoed this language with support for their sequel, saying "Paul told me the good news: Activision was going to let him do a true sequel to Star Control II: The Ur-Quan Masters." Stardock later filed a lawsuit against Reiche/Ford for Trademark infringement, and has since edited their post to remove the language referring to Ghosts of the Precursors as a "true sequel". Stardock alleges in their lawsuit that Reiche/Ford are infringing the "Star Control" Trademark and misleading consumers by calling Ghosts of the Precursors a sequel to Star Control 2.(pgph 41)
What about the Trademark in "The Ur Quan Masters"?
Shortly after filing their lawsuit, Stardock also filed an application for a Trademark in "The Ur Quan Masters", the name of the open source port of Star Control II that uses source code released to the fan community by Reiche and Ford. The United States Patent and Trademark Office (USPTO) responded by asking Stardock to include evidence that they have been in fact using "The Ur Quan Masters" at commerce. Shortly thereafter, Reiche and Ford also filed an application for the same Trademark, with the USPTO responding that their application may be delayed pending the decision on Stardock's application. A successful Trademark application would give someone the exclusive right to use "The Ur Quan Masters" in commerce.
What about Stardock's Trademark applications for certain aliens?
A few days after Reiche and Ford filed their counterclaim, Stardock filed applications for several alien names from Star Control I and II, including "Arilou", "Pkunk", "Mycon", and so on.(below) According to Brad Wardell, the applications were filed in response to Reiche and Ford calling in their Counterclaim for the original Star Control trademark (registration number 2046036) to be canceled (pgph 129-130). Hypothetically, this could give Stardock the exclusive right to these aliens, if the registration is successful. According to the USPTO Trademark Manual, "marks that merely identify a character in a creative work, whether used in a series or in a single work, are not registrable". That being said, courts have found that distinctive characters such as Mickey Mouse have acquired enough a secondary meaning to be protected under Trademark law.
What are the allegations of unfair competition in each lawsuit?
Both sides have alleged that the other party has committed Trademark infringement, which falls under the definition of "unfair competition". More than this, each side has accused the other of "unfair competition" by making statements that might confuse or deceive people that Stardock and Reiche and Ford are somehow affiliated.
Why does it matter if Reiche and Ford call themselves the "creators of Star Control"?
Stardock alleges that Reiche and Ford "advertising themselves as being the creators of the Classic Star Control Games is false and misleading, and has been made in an attempt to dishonestly benefit from the goodwill and reputation associated with the STAR CONTROL Mark".(pgph 54) If Reiche and Ford are not truly the creators of Star Control, then their GOTP announcement would be misleading or false, with legal consequences to follow.(pgph 110)
Stardock's lawsuit further states that "Reiche and Ford may not have created any of the artwork, animation or characters incorporated in the games, or otherwise substantially contributed to the authorship of Star Control I and Star Control II". Since Stardock's legal claim appeared, alleged members of the Star Control 2 development team have appeared to credit Reiche and Ford as the driving creative force behind the game. This includes Greg Johnson, who has credited Reiche and Ford for "having created the games", and described Reiche as "the creative genius of this entire Universe".
Previous publishers have credited Reiche and Ford as the "creators of Star Control" in 1998. Fans have colloquially called them the creators in the 1990s, and 2000s. Journalists have followed suit,, and continued to call them the creators in recent years. Prior to the lawsuit, Stardock's CEO referred to them as the creators in 2014, 2015, as well as 2017. Stardock now publicly describes Reiche and Ford as the designers.
Why does it matter how Stardock described their relationship with P&F leading up to SC:O?
Reiche and Ford have alleged that Stardock has made "false or misleading statements concerning Reiche and Ford’s involvement with and connection to Stardock’s goods and services, including, but not limited to, Star Control: Origins, is likely to cause confusion or mistake or deception as to the affiliation, connection, or association of Stardock". There could be legal consequences if Stardock has overstated Reiche and Ford's involvement in ways that have confused fans. Without exact details of their conversations, it is not clear what kind of relationship existed between Stardock and Reiche and Ford, prior to the lawsuit.
Based on public statements as early as 2013, Stardock's CEO stated that Reiche and Ford were "getting permission to work with us". In a 2014 interview, he further stated that "we'll be talking to Reiche and Ford as we go forward", and that he "talked to them quite a bit about what level of involvement they would like to have in the new game", but that they needed Accolade's permission to work together. Reiche and Ford have categorized this as false or misleading in their counter-claim, stating that they had "declined any involvement because they did not want Stardock or anyone else to further develop their world, and they had always planned to work on it themselves in the future." In 2016, Stardock's CEO stated that Reiche and Ford had been supportive of Star Control: Origins. After the GOTP announcement, the Stardock CEO initially stated that GOTP "was the result of some years of effort on our part to talk them into doing that". and outlined the connection between Star Control: Origins and a "future Paul | Fred sequel" in an interview. The Stardock CEO has stated that they met once at at conference, where "they came to our booth and we were supposed to have dinner but our schedules got tight".
Who will win in court?
This is a multi-dimensional dispute, and it is unlikely anyone will win on every issue. This article attempts to provide the most accurate information possible, grounded in evidence and law. Readers may speculate. If it goes to court, the decision ultimately belongs to a judge.
Can this be settled out of court?
In theory, yes. In fact, 95% of cases are settled before trial. Whether a settlement will actually happen will depend on how strong each party thinks its legal position is, how much they are willing to compromise, and of course the individual personality traits involved.
Stardock's lawsuit claims Trademark in "Star Control" and other "accolade marks" such as "Ur Quan Masters",(pgph 29, 47-48) whereas their settlement offer further asks Reiche and Ford to refrain from using the mark "Ghosts of the Precursors".(sec 1-2) Stardock's settlement offer asks Reiche and Ford to stop representing themselves as the creators of Star Control.(sec 1.iii) Stardock's lawsuit claims a license to characters and plot elements from Reiche and Ford,(pgph 20) whereas their settlement offer asks Reiche and Ford to refrain from using those elements, and to transfer all elements to Stardock.(sec 3) Finally, Stardock's settlement offer asks Reiche and Ford to pay $225,000 in damages,(sec 7) and to refrain from making a game in the same genre as Star Control for 5 years.(sec 5)
Reiche and Ford claim Copyright in the original games,(pgph 136b) but have privately offered to settle with Stardock for the original games to be distributed as open source.(sec II) Although their lawsuit claims that the "Star Control" Trademark may have expired,(pgph 39-41) they have offered to stop using the Star Control Trademark, as long as Stardock abandons its efforts to Trademark the original characters and aliens.(sec IV) Echoing their lawsuit, their settlement offer asks Stardock to discontinue use of fictional elements created by Reiche.(sec V)
It is possible that further settlement offers will be made, as these are just opening offers from each side. After those offers were published by Reiche and Ford, settlement negotiations have been ordered by a magistrate to be kept private. There will be a settlement conference May 14, 2018.
What is the worst case scenario for Star Control: Origins?
Reiche and Ford have not directly asked for Star Control: Origins to not be released. They have, however, asked for an injunction to stop Stardock from "all use of any creative material from Reiche and Ford’s Star Control Games in Star Control: Origins".(pgph 136a) This echoes their request in private settlement.(sec 5) If an injunction were issued it could cause developmental problems and delays for Origins depending on how deeply the infringing material is embedded in Origins and how much reworking would be required to remove it.
The lawsuit has alleged that the Star Control trademark may have expired,(pgph 39-41) but this would ultimately allow multiple parties to release a Star Control game, or allow Stardock to release their new game under a new name. Even so, Reiche and Ford have offered to stop using the Star Control Trademark in their settlement offer.(sec IV)
What is the worst case scenario for Ghosts of the Precursors?
Stardock's lawsuit claims ownership of the "Star Control" Trademark, as well as the "Accolade marks" including "Ur Quan Masters".(pgph 29, 47-48) Stardock has further attempted to register numerous Trademarks in names and terms from the original games.(below) Hypothetically, this might prevent Reiche and Ford from making a game unless they change the names of all the aliens.
Stardock's Complaint also seeks to "invalidate Reiche’s and Ford’s alleged copyrights, including any registrations they have obtained in connection therewith" (Prayer for Relief x).
Stardock's settlement offer goes even further, asking Reiche and Ford to assign all intellectual property in Star Control to Stardock,(sec 3) and asking Reiche and Ford to refrain from making a game in the Star Control genre for 5 years.(sec 5)
Timeline of Star Control
Creation and release of Star Control 1-3: 1988-2000
- 1988-10: Accolade and Reiche/Ford enter into an agreement to develop three games.
- 1989: Reiche and Ford found a game development company called Toys for Bob
- 1990-07: Star Control is released, created by Reiche and Ford.
- 1992-10: Star Control 2 is released, and is acclaimed as one of the best games that year.
- 1996-09: Star Control 3 is released, based upon characters created and used under license from Paul Reiche III and Fred Ford.
- 1997: Compared to the first two games created by Toys for Bob, the third game from Legend Entertainment is not as commercially or critically successful.
- 1998-09: Toys for Bob develop new games and franchises, and press and advertisements continue to describe them as "the creators of Star Control".
- 1998-10: Fans push for a sequel made by Toys for Bob. Paul and Fred tell fans that their campaigns will help make that possible, and that they personally own all rights in Star Control, other than the name and material in SC3.
- 2000-04: French game publisher Infogrames buys Accolade.
- 2000: A fourth Star Control game is ultimately scrapped after a few iterations.
- 2000: Reiche and Ford claim the games were no longer on sale or generating royalties, triggering the end of the 1988 License Agreement.(pgph 37)
- 2001-04: Addendum 3 to the original contract expires.(sec 4.1) According to Reiche and Ford, by this date all licenses expire, reverting Trademark to Accolade, and reverting all other rights to them.(pgph 37)
- 2002-11: The Ur-Quan Masters open source project is released, with Star Control 2 code donated by Toys for Bob. The game is downloaded 100,000 times within one month, and nearly 2 million times from 2002 to 2018.
- 2003: Infogrames renames company to Atari, after acquiring Atari.
- 2003-08: Reiche and Ford discuss the Ur-Quan Masters project, and voice their support for the fan community who worked on it.
- 2005-05: Journalists report that Toys for Bob, "the brains behind Star Control", have been fully acquired by Activision.
- 2005-10: Reiche and Ford tell fans they have deliberately kept their rights to Star Control 1 and 2.
- 2005-12: Star Control 2 is ranked #17 on IGN's top 100 games of all time.
- 2006-03: Pelit reports that that around the year 2000, Toys for Bob turned down an offer to purchase the Star Control Trademark from Accolade for $50,000, prompting them to consider a Star Control sequel under a different name.
- 2006-04: Journalists and fans report that Toys for Bob, the creators of Star Control, are organizing an official petition to create a new Star Control, and implies that they have the rights to the franchise.
- 2006-06: Toys for Bob website reports that "We (I) [written by TFB employee Alex Ness] want us to do a Star Control sequel."
- 2006-08: Star Control 1 is noted as a breakthrough game on the Sega Genesis, as "Paul Reiche III and Fred Ford’s masterpiece". 
- 2007-06: Toys for Bob website reports "we have talked to our parent company Activision about doing a Star Control sequel, quite seriously, and there did honestly seem to be some real live interest on their part."
- 2007-06: Paul and Fred discuss the fan petition and their efforts to make another Star Control. "You will see an SC3 someday. Paul and I have every intention of continuing our almost 19 year collaboration and we're still excited about SC”
- 2007-09 Atari renews the Star Control trademark, which Reiche and Ford later argue as invalid in their counterclaim.
- 2007-12: In IGN's top 100 games list honoring Archon, they note Paul Reiche as half of the partnership that made Star Control.
- 2008-12: IGN includes Star Control in a list of 10 games they would most like to see another sequel.
- 2010-08: In a forum thread about an SC sequel, Fred Ford writes "I want to mention that I've started doing some unspecified work away from the office after some early and continuing conversations with Paul."
He further states "It will definitely be in our spare time for a while...this is not a TFB venture. It is a Paul and Fred venture."
- 2010-08: An unofficial fan interview quotes Fred Ford as planning a 2D Star Control sequel as personal side-project.
- 2011-01: IDDQD reports that Toys for Bob would like to make a true sequel to Star Control.
- 2011-04: Star Control 1 and 2 are announced for sale on GOG.
- 2011-04: Reiche and Ford contact Atari saying Atari's "rights lapsed many years ago". Atari responds, "I had our attorney check this out and you are correct." They negotiate a new distribution arrangement.
- 2011-06: An Engadget profile on Toys for Bob notes Paul Reiche as the co-creator of Star Control.
- 2011-10: In an interview with CVG, Paul Reiche announces: "we promise someday, we will make the real sequel" to Star Control.
- 2011-11: A Kotaku profile on Paul Reiche notes him as co-creator of Star Control.
- 2012-10: In the leadup to another Toys for Bob game, Kotaku, Wired, and Destructoid all describe Toys for Bob as creators of Star Control.
Stardock purchase and development: 2013-2017
- 2013-01: Atari (formerly Infogrames) files for bankruptcy.
- 2013-07: Stardock announces that they have acquired Star Control assets from Atari, in bankruptcy sale.
- 2013-07-24: Stardock tells fans that Reiche and Ford directly own the copyright in Star Control 1&2, and may be able to work on a new Star Control game.
- 2013-09-16: Stardock CEO asks Reiche and Ford to be involved in new Star Control game. They decline, stating "Fred and I are just not comfortable handing over our world to be developed by others".
- 2013-09-16: Stardock responds by offering to sell "the IP rights we acquired from Atari", for the price "at our (Stardock's) cost".
- 2013-10-16: The parties discuss "the total Star Control rights and assets you acquired from Atari" and Stardock's cost in acquiring them.
- 2013-10-25: Stardock again asks Reiche and Ford if they want to purchase these assets. Reiche and Ford decline.
- 2014-01 Stardock announces development of new Star Control game with independent storyline. Says "we will be talking to Paul and Fred as we go forward" and they "cannot be officially involved at present".
- 2015-03: Stardock CEO meets Reiche and Ford at booth at Game Developers Conference.
- 2015-09: Stardock CEO publicly states that Reiche and Ford have been "very supportive", and that "Stardock doesn't have the legal rights to the original (Star Control) lore either. Or, if we did, we have long since refuted those rights."
- 2015-10: Stardock CEO updates Reiche and Ford on development. Reiche and Ford again decline involvement, as they "want to keep our copywritten material from Star Control exclusive to our own future project".
- 2015-11: Stardock CEO publicly states that "I don't believe anyone but Paul and Fred have the rights to mess with the Ur-Quan lore and aliens", and that they own "personal, common-law copyright".
- 2015-12: Stardock CEO allegedly asks Reiche and Ford to license Star Control characters to Galactic Civilizations III.(pgph 74)
- 2016-10-12 Stardock CEO allegedly asks Reiche and Ford "to release an update to Star Control 1/2 under the existing agreement (50/50) split if we can get your permission".(pgph 75)
- 2016-10-18 Stardock releases teaser for Star Control: Origins.
Private dispute and alleged infringement: 2017
- 2017-07-28: Stardock CEO allegedly asks Reiche and Ford to participate in their Star Control anniversary plans, which they decline on account of their own plans.(pgph 76)
- 2017-09-15: Stardock CEO allegedly asks Reiche and Ford to license the ships from Star Control 1 and 2, in exchange for a royalty.
- 2017-09-29: Stardock CEO asks Reiche and Ford to use ships from Star Control 1 and 2, and to participate in Stardock's Star Control anniversary plans.
- 2017-10-04: Reiche tells Stardock that Activision has allowed them to make "a sequel to Star Control 2", which they will announce soon. They decline to license any IP.
- 2017-10-04: Stardock CEO responds that "we do have a license to your IP to use per the original agreement" and offers "coexistence" by licensing the ships at the "already agreed upon royalty".
- 2017-10-06: Reiche offers "our respective rights" are Stardock owning the Trademark, with Ford/Reiche "owning all the IP rights to the works we created". Reiche states that Stardock already acknowledged license had expired.
- 2017-10-06: Stardock CEO responds that license is still valid under section 2.2, as "you are continuing to receive royalties", and suggest working on a "mutually beneficial release plan".
- 2017-10-06: Reiche responds that "section 2.2 lapsed many years ago", and ask Stardock for their position on IP rights. He further states "as a courtesy, our anniversary announcement is imminent".
- 2017-10-06: Stardock CEO responds by referring to section 2.2, and that royalties are still being paid. Suggest coordinated announcements, that Stardock owns Trademark and license to sell original games.
- 2017-10-07: Reiche responds "there were many years where we received nothing" until GOG began selling the games, and that caused section 2.2 to lapse "decades ago", with no chance to regain those rights.
- 2017-10-07: Allegedly, Stardock CEO rejects that the license expired. He allegedly suggests he will use Reiche and Ford's IP under the license, and mentions possibility of litigation.(pgph 86)
- 2017-10-09: Reiche and Ford publicly announce Ghosts of the Precursors as a "direct sequel to Star Control II -- the Ur Quan Masters".
- 2017-10-09: Stardock publicly echoes Reiche/Ford's game announcement as "true sequel to Star Control II: The Ur-Quan Masters". Media and journalists pick up both announcements. (Both announcements are later re-edited.)
- 2017-10-19: Stardock begins selling Star Control 1, 2, and 3, along with pre-orders for Star Control: Origins, on Steam.
- 2017-10-19: Stardock CEO gives an interview describing Star Control multiverse, with mockups and images connecting both games.
- 2017-11: Alleged/unknown discussions continue between Stardock and Reiche/Ford.
- 2017-11-09: Stardock makes Star Control anniversary announcement giving credit to the rest of the Star Control II team. Team member Greg Johnson responds with additional credit to Reiche and Ford.(Stardock re-edited)
- 2017-11-16: Stardock releases Star Control Fleet Battles Beta.
- 2017-12-01 (Estimated): Reiche and Ford issue a DMCA takedown notice to Steam.(pgph 89)
- 2017-12-04 (Estimated): Reiche and Ford issue a DMCA takedown notice to GoG.(pgph 89)
- 2017-12: Stardock issues a counter-notice to Steam. The games remain for sale.(pgph 89)
Legal actions: 2017-present
- 2017-12-08: Stardock files legal claim against Reiche and Ford.
- 2017-12-14: Stardock files application for Trademark in "Ur Quan Masters".
- 2018-01-26: Reiche and Ford file application for Trademark in "Ur Quan Masters".
- 2018-02-22: Reiche and Ford file defense and counterclaim against Stardock.
- 2018-02-26: Stardock begins registering Trademarks for the names of several Star Control alien races.(below)
List of References
- (1) - December 8, 2017 - COMPLAINT against Paul Reiche III, Robert Frederick Ford
- (16) - February 22, 2018 - ANSWER to Complaint with JURY DEMAND by Robert Frederick Ford, Paul Reiche III.
- (17) - February 22, 2018 - COUNTERCLAIM against Stardock Systems, Inc.. Filed by Paul Reiche III, Robert Frederick Ford.
- (27) - March 15, 2018 - AMENDED COMPLAINT
- (34) - March 28, 2018 - Minute Entry for proceedings held before Chief Magistrate Judge Joseph C. Spero
- (35) - March 28, 2018 - Notice of Settlement Conference and Ordering Setting Settlement Conference before Chief Magistrate Judge Joseph C Spero
- (36) - March 28, 2018 - ORDER REGARDING SETTLEMENT DISCUSSIONS
- (37) - March 29, 2018 - Answer to Amended Complaint 27 by Robert Frederick Ford and Paul Reiche III
- (38) - April 16, 2018 - ANSWER TO COUNTERCLAIM 17 Counterclaim, by Stardock Systems, Inc.
- (46) - June 21, 2018 - Letter from All Parties re Compliance with Discovery Meet and Confer per Section 9 of ND's Guidelines for Professional Conduct.
- (49) - Stipulation for Filing of Second Amended Complaint and Amended Counterclaim
- (50) - Claim, aka Amended Counterclaim filed by Reiche & Ford
- (51) - Amended complaint, aka Second Amended Complaint Filed by Stardock
- (53) - Answer to Amended Complaint by Reiche & Ford
- (54) - Answer to Amended Counterclaim by Stardock Systems, Inc.
- (55) - ERRATA to Answer to Amended Counterclaim by Stardock Systems, Inc.
- (56) - MOTION by Stardock Systems, Inc. for Temporary Restraining Order against DMCA.
- Attachment 1 - Wardell Declaration
- Attachment 2 - Valve DMCA 2018/08/17
- Attachment 3 - Valve Counter-notice (undated)
- Attachment 4 - GoG DMCA 2018/08/21
- Attachment 5 - GoG Counter-notice (undated)
- Attachment 6 - Web page screenshots
- Attachment 7 - Weikert Declaration
- Attachment 8 - Stardock Second Amended Complaint Copy
- Attachment 9 - Reiche & Ford First Amended Counter-Complaint Copy
- Attachment 10 - Weikert to Steinberg email 2018/08/22
- Attachment 11 - Steinberg to Weikert email 2018/08/23
- Attachment 12 - Weikert to Steinberg email 2018/08/24
- Attachment 13 - Weikert to Steinberg email 2018/09/06
- Attachment 14 - Weikert - Steinberg emails 2018/09/06
- Attachment 15 - Proposed Order
- (58) - ORDER to Meet and Confer regarding Preliminary Injunction
- (59) - Stipulation with Proposed Order by Reiche and Ford
- (60) - ORDER as stipulated
- (64) - Reiche & Ford Reply to Request for Preliminary Injunction
- Attachment 1 - Reiche Declaration
- Attachment 2 - 1988 Agreement
- Attachment 3 - 1988 Agreement Addendum 1
- Attachment 4 - Star Control II Computer Code Copyright
- Attachment 5 - Star Control II Audiovisual Copyright
- Attachment 6 - 1988 Agreement Addendum 2
- Attachment 7 - Reiche - Accolade emails
- Attachment 8 - 1988 Agreement Addendum 3
- Attachment 9 - 2011 Atari/GoG emails
- Attachment 10 - Reiche - Wardell emails
- Attachment 11 - Wardell ArsTechnica interview
- Attachment 12 - UQM Forum posts
- Attachment 13 - UQM Forum posts
- Attachment 14 - Stardock Forum posts
- Attachment 15 - UQM Forum posts
- Attachment 16 - UQM Forum posts
- Attachment 17 - Stardock Forum posts
- Attachment 18 - Steinberg Declaration
- Attachment 19 - Atari Bankruptcy Auction Documents
- Attachment 20 - Atari Star Control Bankruptcy Sale Documents
- Attachment 21 - Stardock Discovery objection
- Attachment 22 - Weikert - Steinberg emails
- Attachment 23 - Request for notice of Atari bankruptcy
- Attachment 24 - Atari Star Control Bankruptcy Sale Documents
- Attachment 25 - Proposed order denying TRO/PI
- Attachment 26 - Objections to Wardell declaration
- Attachment 27 - Proposed order regarding Wardell declaration
- (71) - Second Amended Counterclaim against Stardock, GOG, and Valve
- Attachment 1 - Exhibit 1 to Second Amended Counterclaim
- Attachment 2 - Exhibit 2 to Second Amended Counterclaim
- Attachment 3 - Exhibit 3 to Second Amended Counterclaim
- Attachment 4 - Exhibit 4 to Second Amended Counterclaim
- Attachment 5 - Exhibit 5 to Second Amended Counterclaim
- Attachment 6 - Exhibit 6 to Second Amended Counterclaim
- Attachment 7 - Exhibit 7 to Second Amended Counterclaim
- Attachment 8 - Exhibit 8 to Second Amended Counterclaim
- Third Amended Complaint by Stardock
- Answer to Second Amended Counterclaim
- (101) - Answer to Counterclaim by Valve Corporation
- (102) - Order by Judge Saundra Brown Armstrong denying 56 Motion for Preliminary Injection
- (1) - Stardock Legal Complaint
- (17) - Fred and Paul Counter-Complaint
- (27) - Stardock Amended Legal Complaint
- (50) - Claim, aka Amended Counterclaim filed by Paul & Fred
- (51) - Amended complaint, aka Second Amended Complaint
- (104) MOTION to Dismiss Count Nine of Second Amended Counterclaim filed by GOG LIMITED, GOG POLAND SP. Z.O.O.
- 2019-01 DMCA Counternotice & Indemnification for Star Control: Origins
Fred and Paul Provided
- Dogar and Kazon - “THERE WERE MANY GREAT BATTLES... AND SOME OF THEM INVOLVED LAWYERS.”
- Dogar and Kazon - Star Control® I, II and III aren't for sale on GOG.com anymore -- How come?
- Dogar and Kazon - Stardock Claims We Are Not the Creators of Star Control. Sues Us. WTF?!
- Dogar and Kazon - .... Report From Surface ....
- Dogar and Kazon - Strange Settlement on an Alien Planet
- Dogar and Kazon - Nope and Nope
Federal Trademark and Copyright Registrations
- List of Trademark Opposition Proceedings
- Trademarks - United States Patent and Trademark Office (By next action date):
- (Opposing): "Star Control" (Service Mark use by Stardock Systems Inc.): (Opposed) (Opposition)
- 2019-02-12: "Star Control" (Trademark use by Stardock Systems, Inc.): (Publish Pending)
- 2019-02-21: "Orz" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Melnorme" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "VUX" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Yehat" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Taalo" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Dnyarri" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Pkunk" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Chenjesu" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Spathi" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Ur-Quan" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Arilou" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Ilwrath" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Syreen" (Intent by Stardock Systems, Inc.): (Published)
- 2019-02-21: "Androsynth" (Intent by Stardock Systems, Inc.): (Published)
- 2019-03-05: "Frungy" (Use by Paul Reiche III): (Opposed) (Opposition)
- 2019-03-05: "Frungy Games" (Use by Paul Reiche III): (Opposed) (Opposition)
- 2019-03-10: "The Ur-Quan Masters" (Use by Stardock Systems, Inc.): (Under Examination)
- 2019-03-11: "The Ur-Quan Masters" (Use by Paul Reiche III): (Suspended) (Blocked by "The Ur-Quan Masters")
- 2019-03-20: "Fwiffo" (Intent by Stardock Systems, Inc.): (Published), (Opposition Pending)
- 2019-03-20: "Druuge" (Intent by Stardock Systems, Inc.): (Published), (Opposition Pending)
- 2019-03-20: "Chmmr" (Intent by Stardock Systems, Inc.): (Published), (Opposition Pending)
- 2019-04-12: "Crimson Corporation" (Intent by Stardock Systems, Inc.): (Under Examination)
- (Suspended): "SUPER-MELEE" (Intent by Stardock Systems, Inc.): (Opposed) (Opposition) (suspended pending litigation)
- (Suspended): "Ghosts of the Precursors" (Intent by Paul Reiche III ): (Opposed) (Opposition) (suspended pending litigation)
- (Suspended): "Precursors" (Intent by Paul Reiche III): (Suspended) (Blocked by "Remnants of the Precursors", which is blocked by "Ghosts of the Precursors", which is suspended pending litigation).
- 2026-03-18: "Star Control" (Use by Stardock Systems, Inc.): (Registered) - Originally by Accolade, Inc.
- Copyrights - United States Copyright Office - United States Copyright Public Catalog
Game Related Materials
Law Related Materials
Commentary from Lawyers
- "Lawful Masses", by Leonard French: Part 1 part 2 part 3
- "YouTuber Law", by Lior Leser: Part 1 part 2 part 3 part 4
- "Virtual Legality", by Richard Hoeg: Part 1 part 2
United States Copyright Office
Web Link: https://www.copyright.gov/
Public Catalog: http://cocatalog.loc.gov/
Copyright Law Listing: https://www.copyright.gov/title17/
Significant Copyright Court Cases
Anderson v. Stallone
Wikipedia Link: https://en.wikipedia.org/wiki/Anderson_v._Stallone
Harvard Law Case Ruling: https://h2o.law.harvard.edu/cases/4668
Spry Fox, LLC v. LOLApps, Inc
Court Listener Link: https://www.courtlistener.com/docket/4411020/spry-fox-llc-v-lolapps-inc/
United States Patent and Trademark Office (USPTO)
Web Link: https://www.uspto.gov/
Trademark Basics Page: https://www.uspto.gov/trademarks-getting-started/trademark-basics
Trademark Process: https://www.uspto.gov/trademarks-getting-started/trademark-process
Trademark Database Search: https://www.uspto.gov/trademarks-application-process/search-trademark-database
Trademark Federal Statutes and Rules (TFSR)
Web Link: https://tmep.uspto.gov/RDMS/TFSR/current
Summary: Current practices and laws regarding of United States Federal Trademarks.
Trademark Manual of Examining Procedure (TMEP)
Web Link: https://tmep.uspto.gov/RDMS/TMEP/current
Summary: Current United States Federal Trademark guide to determine how to appropriate examine a trademark for validity.
Kellogg Co. v. National Biscuit Co.
Wikipedia Link: https://en.wikipedia.org/wiki/Kellogg_Co._v._National_Biscuit_Co.
Summary: "Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938), is a United States Supreme Court case in which the Court ruled that the Kellogg Company was not violating any trademark or unfair competition laws when it manufactured its own Shredded Wheat breakfast cereal, which had originally been invented by the National Biscuit Company (later called Nabisco). Kellogg's version of the product was of an essentially identical shape, and was also marketed as "Shredded Wheat"; but Nabisco's patents had expired, and its trademark application for the term "Shredded Wheat" had been turned down as a descriptive, non-trademarkable term.
The Court therefore "forcefully applied the principle that once a patent has expired, its benefits are to be freely enjoyed by the public." Kellogg has been called possibly "the Supreme Court's most versatile and influential trademark decision". It had a direct impact on the structure of the Lanham Act and is a "routine starting point for analysis in trademark opinions in lower courts.""
Supreme Court Decision: https://caselaw.findlaw.com/us-supreme-court/305/111.html
Significance: Foundational court case that helped write the Lanham Act and established the Functionality Doctrine.
Wikipedia Link: https://en.wikipedia.org/wiki/Lanham_Act
Summary: "The Lanham (Trademark) Act (Pub.L. 79–489, 60 Stat. 427, enacted July 5, 1946, codified at 15 U.S.C. § 1051 et seq. (15 U.S.C. ch. 22)) is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising."
Significance: These are the laws that serve as the basis of the counts by Stardock's claim.
Court Cases related to the Lanham Act: These are court cases that showcase the use of the Lanham.
- "Raunchy film can use ‘No Sesame. All Street’ in trailers, judge rules" - https://www.newsday.com/entertainment/movies/sesame-street-puppet-film-happytime-murders-1.18859367
- "Ten Famous Intellectual Property Disputes" - https://www.smithsonianmag.com/history/ten-famous-intellectual-property-disputes-18521880/
- "Trademark Bully Thwarted: Spots the Space Marine Back Online" - https://www.eff.org/deeplinks/2013/02/trademark-bully-thwarted-spots-space-marine-back-online
- "A Cocky Lawyer Reviews #cockygate" - https://www.youtube.com/watch?v=mOTlj4MARbo&t=0s
Wikipedia Link: https://en.wikipedia.org/wiki/Functionality_doctrine
Summary: "In United States trademark law, the functionality doctrine prevents manufacturers from protecting specific features of a product by means of trademark law. There are two branches of the functionality doctrine: utilitarian functionality and aesthetic functionality. The rationale behind functionality doctrine is that product markets would not be truly competitive if newcomers could not make a product with a feature that consumers demand. Utilitarian functionality provides grounds to deny federal trademark protection to product features which do something useful. Patent law, not trademark, protects useful processes, machines, and material inventions. Patented designs are presumed to be functional until proven otherwise. Aesthetic functionality provides grounds to deny trademark protection to design features which are included to make the product more aesthetically appealing and commercially desirable. Aesthetic features are within the purview of copyright law, which provides protection to creative and original works of authorship."
Trademark Manual of Examination Procedure 1202.02(a)(ii): "Purpose of Functionality Doctrine" - https://www.bitlaw.com/source/tmep/1202_02_a_ii.html
Trademark Manual of Examination Procedure 1202.02(a)(iii)(A): "Functionality" - https://www.bitlaw.com/source/tmep/1202_02_a_iii_A.html
Internation Trademark Association - INTABulletin - Aesthetic Functionality AFter Louboutin: http://www.inta.org/INTABulletin/Pages/AestheticFunctionalityAfterLouboutin.aspx
Legal Information Institute: https://www.law.cornell.edu/wex/functionality_doctrine_%28trademark%29
"Use in Commerce"
Summary: In law, use in commerce is a very broad and vague definition. "Commerce" does not imply "Commercial" as the two often have different definitions within certain contexts of law. "Use in commerce" definition can vary based on the context, but trademark specific examples are given.
Definitions: As per Trademark Federal Statutes and Rules §45 (15 U.S.C. §1127): https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-0bf15ce9-7f42-4d7b-9224-c09f64b8c9bc.html
Commerce. The word "commerce" means all commerce which may lawfully be regulated by Congress.
Use in commerce. The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—
- on goods when—
- (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
- (B) the goods are sold or transported in commerce, and
- on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
Trademark Manual of Examining Procedure: 0900 - Use in Commerce: https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e7.html
An important note from this section of the TMEP is 901.03: "Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website. See Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y. 1997) , aff'd, 152 F.3d 920 (2d Cir. 1998) (Table)."
Wikipedia Link: https://en.wikipedia.org/wiki/Trademark_distinctiveness
Summary: There are five levels of trademark strengths, each with different requirements that need to be met in order to receive Federal Trademark Protection.
- Fanciful or Coined Marks (Strongest, easiest to gain protection for.)
- Arbitrary Marks
- Suggestive Marks
- Descriptive Marks (Minimum level required for any protection.)
- Generic Words (Weakest, no protection offered.)
Internation Trademark Association - Fact Sheets - Trademark Strength: http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx
Trademark Fair Use
Wikipedia Link: https://en.wikipedia.org/wiki/Fair_use_(U.S._trademark_law)
Summary: "In the United States, trademark law includes a fair use defense, sometimes called "trademark fair use" to distinguish it from the better-known fair use doctrine in copyright. Fair use of trademarks is more limited than that which exists in the context of copyright."
Types of Trademark Fair Use: There are two main types of fair use in United States Trademark Law
- Nominative Fair Use: "referencing a mark to identify the actual goods and services that the trademark holder identifies with the mark. For example, it is not a trademark violation to refer a printer produced by Casio as a "Casio printer"."
- Descriptive Fair Use: "Using the mark in an ordinary, descriptive manner to describe a product or service. For example, the Paul Simon song, Kodachrome, uses a trademark for a film brand, but within the context of describing film and photographs."
(15 U.S.C. §1115) Registration as evidence of right to exclusive use; defenses: https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-7cea1de2-b80b-4aab-8760-9a7c325b1ff5.html
"(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin;"
"(8) That the mark is functional"
Wikipedia Link: https://en.wikipedia.org/wiki/Rogers_v._Grimaldi
Summary: "Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) is a trademark and intellectual freedom case, known for establishing the "Rogers test" for protecting uses of trademarks that implicate intellectual freedom issues."
As summarized in the article: https://www.natlawreview.com/article/trademark-use-within-expressive-work-must-only-pass-rogers-test-not-likelihood-confu the Rogers Test has two qualifiers to determine if use of a mark is infringing in or upon a creative work:
- "the use of the mark has no artistic relevance to the underlying work whatsoever,"
- "or, it has some artistic relevance, but explicitly misleads as to the source or the content of the work.”
International Trademark Association - INTABulletin - Litigating the First Amendment Defense in the Video Game Context : https://www.inta.org/INTABulletin/Pages/LitigatingtheFirstAmendmentDefenseintheVideoGameContext.aspx
University of Georgia Law, Explicitly Explicit: The Rogers Test and the Ninth Circuit: http://digitalcommons.law.uga.edu/cgi/viewcontent.cgi?article=1027&context=jipl
Related Court Cases
- E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc. - (PDF p. 16, Document p. 207): http://digitalcommons.law.uga.edu/cgi/viewcontent.cgi?article=1027&context=jipl AND https://www.courtlistener.com/opinion/1226414/ess-entertainment-2000-v-rock-star-videos/
Likelihood of Confusion
Summary: Depending on the district of the court there are a number of factors use when determining whether another mark will cause confusion against another mark. The 9th Circuit Courts use the Eight Sleekcraft Factors.
Trademark Well - Likelihood of Confusion Tests by Circuit: https://trademarkwell.com/likelihood-of-confusion-tests-by-circuit/
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979): https://scholar.google.com/scholar_case?case=1715537159001049163
Eight Sleekcraft Factors ( AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979) )
- the strength of the mark
- the proximity of the goods
- the similarity of the marks
- evidence of actual confusion
- the marketing channels used
- the type of goods and the degree of care likely to be exercised by the purchaser
- the defendant's intent in selecting the mark
- the likelihood of expansion of the product lines
The California Blog of Appeal - Eight Means Eight: http://www.calblogofappeal.com/2008/02/22/eight-means-eight/
- AIPLA American Intellectual Property Law Association
- AIPLA - Committees - Trademark Litigation - Legal Standards of the Federal Circuit Courts - 2017 Update: 9th Circuit Court:
- This document contains the standards used to determine certain factors regarding Trademark Law within the 9th Circuit courts. These include: Secondary Meaning, Likelihood of Confusion, Initial Interest Confusion, Preliminary Injunction Standard, Laches, Abandonment, Fair Use, Use of Internet Keywords, Secondary Liability, Aesthetic Functionality, Dilution, and Damages